Trials@uspto.gov
`571-272-7822
`
`Paper 11
`Entered: November 30, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SOTERA WIRELESS, INC.,
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner.
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`IPR2020-01033
`Patent RE47,249 E
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`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`WIEKER, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`
`
`
`571-272-7822
`
`Paper 11
`Entered: November 30, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SOTERA WIRELESS, INC.,
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2020-01033
`Patent RE47,249 E
`
`
`
`
`
`
`
`
`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`WIEKER, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`
`
`
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`IPR2020-01033
`Patent RE47,249 E
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`I.
`
`INTRODUCTION
`A. Background
`Sotera Wireless, Inc. (“Petitioner”)1 filed a Petition requesting inter
`partes review of claims 1–24 (“the challenged claims”) of U.S. Patent
`No. RE47,249 E (Ex. 1001, “the ’249 patent”). Paper 1 (“Pet.”). Masimo
`Corporation (“Patent Owner”) filed a Preliminary Response. Paper 5
`(“Prelim. Resp.”). We authorized additional briefing for the parties to
`address the factors laid out in our precedential Order in Apple, Inc. v. Fintiv,
`Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential)
`(“Fintiv Order”) regarding the exercise of discretion under 35 U.S.C.
`§ 314(a). Paper 6. Petitioner filed a Preliminary Reply (Paper 9, “Prelim.
`Reply”), and Patent Owner filed a Preliminary Sur-reply (Paper 10, “Prelim.
`Sur-reply”).
`We have authority to determine whether to institute an inter partes
`review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review
`may not be instituted unless it is determined that “the information presented
`in the petition filed under section 311 and any response filed under section
`313 shows that 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 (2018); see also 37 C.F.R § 42.4(a) (“The Board institutes
`the trial on behalf of the Director.”).
`For the reasons provided below and based on the record before us, we
`determine that Petitioner has demonstrated a reasonable likelihood that
`
`
`1 Petitioner states that Sotera Wireless, Inc. is the real party-in-interest in this
`petition. Pet. 1. Petitioner also names Hon Hai Precision Industry Co., Ltd.
`(“Hon Hai”) as a real party-in-interest in this Petition due to Hon Hai’s
`involvement in a related proceeding. Id.
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`Petitioner would prevail in showing the unpatentability of at least one of the
`challenged claims. Accordingly, we institute an inter partes review on all
`grounds set forth in the Petition.
`
`B. Related Proceedings
`The parties identify the following matter pending in district court and
`related to the ’249 patent: Masimo Corp. v. Sotera Wireless, Inc., Case 3:19-
`cv-01100 (S.D. Cal.) (the “parallel proceeding”). 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;
`IPR2020-01015, challenging U.S. Patent No. 9,795,300;
`IPR2020-01019, challenging U.S. Patent No. RE47,353;
`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 ’249 patent. Id. at 1.
`
`C. The ’249 Patent
`The ’249 patent is titled “Alarm Suspend System,” and issued on
`February 19, 2019 from U.S. Patent Application No. 15/583,948, filed
`May 1, 2017. Ex. 1001 codes (22), (45), (54). The ’249 patent is a reissue
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`of U.S. Patent No. 9,153,121 (“the ’121 patent”), filed on August 26, 2014.
`Id. at code (64).2
`The ’249 patent discloses a physiological measurement system that
`utilizes an alarm suspend system. Id. at 4:25–26. The disclosed system
`includes a noninvasive sensor and a physiological monitor. Id. at 4:25–30.
`The monitor may include a display, touch keys, and controls including “an
`alarm silence button [] that is pressed to temporarily suspend out-of-limit
`parameter alarms and system alarms, such as low battery.” Id. at 4:37–48.
`The alarm suspend system prevents unnecessary disturbances to patients and
`distractions to caregivers. Id. at 2:33–36. “Advantageously, an alarm
`suspend system provides a parameter-dependent variation in the alarm
`suspend duration, as described below, utilizing a common silence button or
`other suspend initiator.” Id. at 4:60–63. “The alarm suspend period is
`typically long enough to give a caregiver sufficient time to intervene with
`appropriate patient treatment yet short enough to ensure that patient health is
`not endangered if intervention is ineffective.” Id. at 2:38–42.
`
`
`2 The ’249 patent claims earliest priority through a series of continuation
`applications to Provisional application No. 61/084,615, filed on July 29,
`2008. Ex. 1001, codes (60), (63). The specific priority date of the
`challenged claims is not at issue in this proceeding, and we need not make
`any determination in this regard for purposes of this Decision.
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`Figure 3 of the ’249 patent is reproduced below.
`
`
`Figure 3 illustrates a flow diagram of the alarm suspend system. Id. at 4:16–
`17. “Alarm triggers include system failures 338 and out-of-limit parameters
`318.” Id. at 5:43–44. Out-of-limit parameters are identified by comparing
`measured parameters 312 to default or user-specified limits 314. Id. at 5:51–
`52. Out-of-limit condition 318 triggers alarm 340 that can be suspended 328
`by user-initiated silence request 322. Id. at 5:52–56. Suspend durations may
`vary depending on the parameter. Id. at 6:23–28. For example, “relatively
`slow treatment parameters . . . are assigned relatively long suspend
`durations. Similarly, relatively fast treatment parameters, such as [oxygen
`saturation (‘SpO2’)] and [pulse rate (‘PR’)], are assigned relatively short
`suspend durations.” Id. at 6:28–33.
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`Figure 4 of the ’249 patent is reproduced below.
`
`
`
`
`Figure 4 illustrates an alarm suspend “that operates independently for each
`measured parameter that can trigger an alarm.” Id. at 5:66–6:1. The system
`triggers alarm 420 when a parameter is measured outside set limit 414. Id.
`at 6:1–4. A user may activate silence request 422 that suspends alarm 430
`for predetermined duration 432. Id. at 6:5–10. The predetermined duration
`“may be a function of the out-of-limit parameter.” Id. at 5:60–61. When the
`predetermined duration expires, the alarm is activated until the triggering
`parameter is within limit 424 or the user again requests silence 422. Id. at
`6:13–15. Alarm “suspend 430 deactivates if the measured parameter
`becomes within limits 438, such as when the patient condition improves, or
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`if no physiological data is detected 439.” Id. at 6:15–18. Alternatively,
`alarm suspend override 436 reactivates alarm 420 when a measured
`parameter changes by a sufficient out-of-limit amount. Id. at 6:20–24.
`
`D. Illustrative Claim
`Of the challenged claims, claims 1, 13, and 18 are independent.
`Claims 1 and 18 are directed to a system and claim 13 is directed to a
`method. All three claims have similar recitations. Claim 1 is illustrative and
`reproduced below.3
`1. A physiological measurement system comprising:
`to be
`a noninvasive physiological sensor configured
`positioned on a patient and output a signal responsive to a
`physiological condition of the patient; and
`the
`one or more processors
`in communication with
`noninvasive physiological sensor, the one or more processors
`configured to electronically:
`determine a measurement of a physiological parameter based
`at least in part upon the signal;
`determine whether an alarm condition exists by determining
`whether an activation threshold has been satisfied by the
`measurement of the physiological parameter;
`access an alarm hold initiator for a parameter-specific alarm
`hold period of time corresponding to the physiological
`
`3 The ’249 patent is a reissue patent. As is standard when printing the claims
`of a reissue patent, matter enclosed in heavy brackets [ ] was deleted from
`the original claims and matter printed in italics was added in the reissued
`claims. For convenience, we produce a clean version of reissued claim 1.
`We acknowledge Patent Owner’s argument that Petitioner’s Listing of
`Claims “includes emphasis, double emphasis, and bracketed language
`without explanation.” Prelim. Resp. 3. Petitioner’s Listing of Claims,
`however, reproduces the claims as printed in the ’249 patent. We
`understand Petitioner’s use of bold merely to enhance readability of the
`claim.
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`parameter, the parameter-specific alarm hold period of time
`being one of a plurality of parameter-specific alarm hold
`periods of time, the parameter-specific alarm hold period of
`time being different from at least one other parameter-specific
`alarm hold period of time corresponding to at least one other
`physiological parameter for which the one or more processors
`are configured to determine at least one measurement;
`determine that the alarm hold initiator indicates to hold an
`indication of an alarm for the alarm condition;
`in response to determining that the alarm hold initiator
`indicates to hold the indication of the alarm, hold the
`indication of the alarm for the parameter-specific alarm hold
`period of time; and
`subsequent to the parameter-specific alarm hold period of
`time passing, activate the indication of the alarm while the
`measurement of the physiological parameter satisfies the
`activation threshold.
`Ex. 1001, 7:39–8:17.
`
`E. Applied References
`Petitioner relies on the following references in the asserted grounds
`(Pet. 6–7):
`
`Baker, Jr. et al., U.S. Patent No. 5,865,736, filed Sep. 30,
`1997, issued Feb. 2, 1999 (Ex. 1005, “Baker-1”);
`Batchelder et al., U.S. Patent Application Publication No.
`2009/0247851 A1, filed Mar. 24, 2009, published Oct. 1, 2009
`(Ex. 1006, “Batchelder”);
`Baker, Jr., U.S. Patent Number 8,792,949 B2, filed
`Mar. 6, 2009, issued Jul. 29, 2014 (Ex. 1007, “Baker-2”);
`Saidara et al., U.S. Patent Application Publication No.
`2005/0038332 A1, filed Jun. 3, 2004, published Feb. 17, 2005
`(Ex. 1008, “Saidara”);
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`Hickle et al., U.S. Patent Application Publication No.
`2003/0135087 A1, filed Nov. 1, 2002, published Jul. 17, 2003
`(Ex. 1009, “Hickle”); and
`S. Malangi, Simulation and mathematical notation of
`alarms unit for computer assisted resuscitation algorithm, New
`Jersey Institute of Technology, Theses 526, (2003) (Ex. 1010,
`“Malangi”).
`Petitioner also submits the Declaration of George E. Yanulis
`(Ex. 1003). Patent Owner does not submit declaratory evidence at this stage.
`
`F. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1–24 are unpatentable based on the
`following grounds:
`Claims Challenged
`1, 6–8, 13, 14, 18, 19,
`23, 24
`1, 2, 6–9, 13–16, 18–24
`1, 2, 6–9, 13–15, 18–24
`3–5, 10–12, 16, 17
`1, 2, 6-9, 13–15, 18–24
`3–5, 10–12, 14, 16, 17,
`23, 24
`
`
`Reference(s)/Basis
`
`Baker-1
`Baker-1, Batchelder
`Baker-1, Batchelder, Baker-2
`Baker-1, Batchelder, Baker-2,
`Hickle
`Saidara, Malangi
`Saidara, Malangi, Hickle
`
`35 U.S.C. §
`103
`
`103
`103
`103
`103
`103
`
`II. DISCUSSION
`A. Claim Construction
`For petitions 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), including
`construing the claim in accordance with the ordinary and customary
`meaning of such claim as understood by one of ordinary skill in the art and
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`the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). The
`Petition was filed June 3, 2020. Thus, we apply the claim construction
`standard as set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
`2005) (en banc).
`Only those claim terms that are in controversy need to be construed,
`and only to the extent necessary to resolve the controversy. Nidec Motor
`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
`Cir. 2017).
`
`1. “alarm hold period of time”
`Petitioner contends that “‘alarm hold period of time’ must be
`interpreted in light of the specification, which only teaches suspension of
`active alarms and does not once use the term ‘hold.’” Pet. 14 (citing
`Ex. 1003 ¶ 45). Petitioner also contends that during prosecution of the
`application that issued as the ’249 patent, the Examiner “rejected the claims
`in view of prior art that teaches suspending active alarms.” Id. (citing
`Ex. 1003 ¶¶ 30, 45; Pet. 10–13). However, Petitioner states that, in the
`parallel District Court proceeding, Patent Owner asserted that this claim
`language is satisfied by systems in which activation of an alarm is delayed
`until a measured parameter exceeds a threshold for a predetermined period
`of time. Pet. 14. In light of these arguments, Petitioner presumes that Patent
`Owner’s construction of “alarm hold period of time” encompasses a “delay
`[that] is part of the alarm threshold,” or in other words, “if the parameter
`returns to a normal range within the ‘annunciation delay’ period, the alarm
`never activates.” Id. (citing Ex. 1003 ¶ 44).
`The Petition presents different grounds to account for alternate
`constructions of this phrase. Id. at 14–15. Specifically, the Petition states
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`that “Grounds 1–4 are directed to a construction encompassing delays/holds
`before an alarm is activated (i.e., pre-alarm delays),” to account for Patent
`Owner’s presumed construction, “and Grounds 5–6 are directed to
`temporary suspensions/holds of active alarms (i.e., post-alarm suspensions),”
`to account for Petitioner’s construction. Id. at 15.
`In its Preliminary Response, Patent Owner contends that Petitioner
`fails to offer an actual construction of this phrase and, instead, “improperly
`presents litigation-associated non-infringement arguments.” Prelim. Resp. 8.
`Patent Owner argues that “‘alarm hold period of time’ [] has a plain meaning
`that needs no further construction,” and that the Board need not reach this
`claim construction issue because “other issues are dispositive.” Id.
`Despite raising the issue, Petitioner fails to offer an express
`construction of this phrase. Pet. 14. At this stage of the proceeding, we
`agree with Patent Owner that this phrase need not be construed expressly.
`Accordingly, we apply the plain and ordinary meaning of “alarm hold period
`of time,” for purposes of this Decision. During trial, the parties are
`encouraged to develop the record regarding the proper construction of this
`phrase in light of the Specification.
`
`2. “predetermined,” “fixed,” or “pre-set” alarm hold period of time
`Patent Owner asserts that “[e]ach independent claim also requires
`multiple predetermined alarm hold periods of time where one alarm hold
`period differs from another.” Prelim. Resp. 10. Patent Owner argues that
`the claim language reciting “hold periods [that] are parameter-specific and
`different necessarily requires that these time-periods are predetermined.”
`Id. at 11–12 (also arguing the Specification supports this construction, and
`citing Ex. 1001, 2:37–38, 5:58–60, 6:5–11, Figs. 3–4, code (57)).
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`Elsewhere, Patent Owner refers to this limitation as requiring hold periods
`that are “fixed.” See, e.g., id. at 3, 28, 32–33.
`Petitioner does not discuss whether the “alarm hold period of time”
`requires a “predetermined” or “fixed” period. See generally Pet. However,
`Petitioner asserts Grounds 3–4, as an alternative to Grounds 1 and 2, “[t]o
`the extent the [’249 patent] claims require pre-set ‘parameter-specific alarm
`hold periods of time.’” Id. at 57.
`At this stage of the proceeding, we do not agree that “alarm hold
`period of time” requires a predetermined, fixed, or pre-set period. In support
`of its position, Patent Owner identifies portions of the Specification that it
`contends “repeatedly confirm[] that the duration of time after the alarm
`condition triggers is ‘predetermined.’” Prelim. Resp. 11–12 (citing
`Ex. 1001, 2:37–38, 5:58–60, 6:5–11, Figs. 3–4, code (57)). The cited
`portions of the Specification, however, discuss a “suspend period” that
`occurs after an audible or visual indication of an alarm is activated. See,
`e.g., Ex. 1001, 2:37–38 (“During alarm suspension, visual alarms remain
`active. If an alarm condition persists after a predetermined alarm suspend
`period, the audible alarm resumes.”); see also id. at 5:58–60 (“alarm suspend
`328”), 6:5–11 (“silence request 422 suspends the alarm 430 which turns off
`audible alarms”). At this stage, Patent Owner has not shown persuasively
`that these disclosures pertain to the claimed “alarm hold period of time,”
`which terminology does not appear in the Specification, and which may
`have a different scope than “suspend period.”
`Moreover, even if the cited portions of the Specification are pertinent
`to the reissue claim language, the claims themselves do not recite a
`predetermined, fixed, or pre-set time period. It is well-settled that “[i]t is
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`improper for a court to add ‘extraneous’ limitations to a claim, that is,
`limitations added ‘wholly apart from any need to interpret what the patentee
`meant by particular words or phrases in the claim.’” Hoganas AB v. Dresser
`Indus., Inc., 9 F.3d 948, 950 (Fed. Cir. 1993) (quoting E.I. du Pont de
`Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir.
`1988)). Indeed, “[e]ven when the specification describes only a single
`embodiment, the claims of the patent will not be read restrictively unless the
`patentee has demonstrated a clear intention to limit the claim scope using
`‘words or expressions of manifest exclusion or restriction’.” Liebel-
`Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (citation
`omitted). Patent Owner does not demonstrate such intent. In fact, the
`Specification indicates that suspend “duration 324 may be a function of the
`out-of-limit parameter 312” (Ex. 1001, 5:60–61), at least suggesting that it
`need not be a predetermined, fixed, or pre-set value.
`Accordingly, at this stage of the proceeding, we decline to import into
`the claims a requirement that alarm hold period of time be predetermined,
`fixed, or pre-set. SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870,
`875 (Fed. Cir. 2004) (“Though understanding the claim language may be
`aided by the explanations contained in the written description, it is important
`not to import into a claim limitations that are not a part of the claim.”).
`
`3. Order of Claim Language
`As noted above, claim 1 recites, in part, “determine whether an alarm
`condition exists by determining whether an activation threshold has been
`satisfied by the measurement of the physiological parameter.” Ex. 1001,
`7:53–56. With respect to the subsequent claim limitations, Patent Owner
`contends:
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`Each of the independent claims (a) accesses an alarm hold
`initiator for a parameter-specific alarm hold period of time
`corresponding to a physiological parameter, (b) determines that
`the alarm hold initiator indicates to hold an indication of an alarm
`for an alarm condition, and then (c) holds the indication of the
`alarm for the parameter-specific alarm hold period of time.
`Prelim. Resp. 8–9. Patent Owner states that “[t]hese are three different
`functions that result in alarm presentation only after the generation of the
`alarm condition and the hold period of time passes.” Id. at 10. Patent
`Owner proposes that the Board “confirm that (a) accessing the alarm hold
`initiator differs from (b) the determination to hold an indication of an alarm
`for an alarm condition, which likewise differs from, and must precede,
`(c) the parameter-specific alarm hold period of time.” Id. According to
`Patent Owner, “[t]his is dispositive for Grounds 1–4.” Id.
`Patent Owner’s position is unclear because, as reproduced above,
`Patent Owner states that alarm presentation (also referred to as activation or
`indication) occurs “only after the generation of the alarm condition and the
`hold period of time passes.” Id. (emphasis added). However, in discussing
`Petitioner’s asserted ground of unpatentability over Baker-1, Patent Owner
`implies that “determin[ing] whether an activation threshold has been
`satisfied by the measurement of the physiological parameter,” as claimed—
`requires actual presentation of an alarm once the activation threshold is
`satisfied, but prior to passage of the hold period. See, e.g., id. at 31
`(distinguishing Petitioner’s alleged “activation threshold” on the basis that
`“no alarm is triggered after passing the low saturation [i.e., activation]
`threshold”).
`Based on the record before us, we are not persuaded that satisfying an
`activation threshold requires actual presentation (i.e., activation or
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`indication) of an alarm, prior to passage of the hold period. The phrase
`“activation threshold” is not used or defined in the ’249 patent. The only
`place this language appears is in the reissue claims. “[A]larm activation
`threshold” was first introduced in a Preliminary Amendment filed with the
`application that led to the ’121 patent (i.e., the patent from which the ’249
`patent reissued). See Ex. 1016, 142–148. For example, the Preliminary
`Amendment presented independent claim 2, which recited, inter alia,
`“activate an alarm in response to determining an alarm activation threshold
`has been satisfied by the physiological parameter measurement.” Id. at 143
`(emphases added). Thus, the claim expressly recited activation of the alarm
`in addition to the recitation of satisfying the activation threshold. See
`Innova/Pure Water v. Safari Water Filtration, 381 F.3d 1111, 1119 (Fed.
`Cir. 2004) (“While not an absolute rule, all claim terms are presumed to
`have meaning in a claim.”). Relatedly, claim 1 of the ’249 patent expressly
`recites “subsequent to the parameter-specific alarm hold period of time
`passing, activat[ing] the indication of the alarm” (Ex. 1001, 8:14–15
`(emphasis added)), suggesting that, if the inventors had wanted to require
`actual activation (or indication) of an alarm upon satisfaction of the
`activation threshold and prior to the alarm hold period, they knew how to do
`so.
`
`This evidence tends to lead to a conclusion that Patent Owner did not
`intend that use of the phrase “activation threshold” implicitly requires an
`alarm to actually activate once that threshold is satisfied and prior to the
`alarm hold period passing. Instead, we determine that the claimed
`“determin[e] whether an activation threshold has been satisfied” may be met
`simply by the measured physiological parameter being outside of its set
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`limit, and that it does not require actual activation (or indication) of an
`alarm.
`We need not address further Patent Owner’s argument regarding the
`order of claim limitations at this stage of the proceeding, as it is not
`necessary to resolve the controversies before us. Nidec, 868 F.3d at 1017.
`
`B. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103 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.” 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 skill in the art; and (4) objective evidence of non-
`obviousness.4 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). When
`evaluating a combination of teachings, we must also “determine whether
`there was an apparent reason to combine the known elements in the fashion
`claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn,
`441 F.3d 977, 988 (Fed. Cir. 2006)). Whether a combination of prior art
`elements would have produced a predictable result weighs in the ultimate
`determination of obviousness. Id. at 416–417.
`In an inter partes review, the petitioner must show with particularity
`why each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech.,
`
`
`4 At this stage of the proceeding, Patent Owner has not presented objective
`evidence of non-obviousness.
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`Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b). The
`burden of persuasion never shifts to Patent Owner. Dynamic Drinkware,
`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
`We analyze the challenges presented in the Petition in accordance
`with the above-stated principles.
`
`C. 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,” wherein “[l]ess work experience may be
`compensated by a higher level of education, such as a master’s degree, and
`vice versa.” Pet. 13 (citing Ex. 1003 ¶¶ 33–41).
`At this stage of the proceeding, Patent Owner does not offer a position
`as to the level of ordinary skill in the art. See generally Prelim. Resp.
`For purposes of this Decision, we adopt Petitioner’s assessment,
`which appears consistent with the level of skill reflected in the Specification
`and prior art.
`
`D. Discretion Under 35 U.S.C. § 314(a)
`Patent Owner, relying on our precedential decisions in NHK5 and the
`Fintiv Order,6 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. 12–20.
`
`
`5 NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8
`(PTAB Sept. 12, 2018) (precedential).
`6 Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020)
`(precedential).
`
`17
`
`
`
`IPR2020-01033
`Patent RE47,249 E
`
`
`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.
`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, 815 F.3d at 1367 (“[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;
`
`18
`
`
`
`IPR2020-01033
`Patent RE47,249 E
`
`
`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.
`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. 1033) 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. 13;
`Prelim. 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. 1035; see Prelim. Resp. 16. Petitioner served its invalidity
`contentions on March 20, 2020, and served amended invalidity contentions
`on September 8, 2020. Exs. 2004, 2007; see Prelim. Resp. 16.
`On June 3, 2020, Petitioner filed the Petition in this proceeding. See
`Paper 3 (according the Petition a filing date of June 3, 2020).
`Per the court’s Scheduling Order, which was modified on October 6,
`2020, fact discovery closes on February 12, 2021, and expert discovery
`
`19
`
`
`
`IPR2020-01033
`Patent RE47,249 E
`
`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
`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. 13; Prelim. Reply 2–3. Patent Owner
`contends that a “stay is unlikely.” Prelim. Resp. 13. In particular, Patent
`Owner contends that “[t]he 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.” Prelim.
`Reply 3 (citing Ex. 1037).
`
`20
`
`
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`IPR2020-01033
`Patent RE47,249 E
`
`
`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
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