Trials@uspto.gov
`571-272-7822
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`Paper 39
`Entered: September 23, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
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`
`
`SOTERA WIRELESS, INC.,
`Petitioner,
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`v.
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`MASIMO CORPORATION,
`Patent Owner.
`___________
`
`IPR2020-00967 (Patent RE47,244 E)
`IPR2020-01019 (Patent RE47,353 E)
`IPR2020-01033 (Patent RE47,249 E)
`___________
`
`Record of Oral Hearing
`Held: September 8, 2021
`_____________
`
`
`
`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`AMANDA F. WIEKER, Administrative Patent Judges.
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`
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`
`571-272-7822
`
`
`
`
`
`
`Paper 39
`Entered: September 23, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`
`
`SOTERA WIRELESS, INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`___________
`
`IPR2020-00967 (Patent RE47,244 E)
`IPR2020-01019 (Patent RE47,353 E)
`IPR2020-01033 (Patent RE47,249 E)
`___________
`
`Record of Oral Hearing
`Held: September 8, 2021
`_____________
`
`
`
`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`AMANDA F. WIEKER, Administrative Patent Judges.
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`
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`
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`IPR2020-00967 (Patent RE47,244 E)
`IPR2020-01019 (Patent RE47,353 E)
`IPR2020-01033 (Patent RE47,249 E)
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`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`RUDOLPH TELSCHER, ESQUIRE
`DAISY MANNING, ESQUIRE
`Husch Blackwell, LLP
`190 Carondelet Plaza
`Suite 600
`St. Louis, MO 63105
`
`ON BEHALF OF PATENT OWNER:
`
`STEPHEN W. LARSON, ESQUIRE
`JACOB PETERSON, ESQUIRE
`Knobbe Martens
`
`2040 Main Street # 14
`Irvine, CA 92614
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`The above-entitled matter came on for hearing on Wednesday,
`September 8, 2021, commencing at 1:00 p.m., EDT, at the U.S. Patent and
`Trademark Office, by video/by telephone, before Julie Souza, Notary Public.
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`IPR2020-00967 (Patent RE47,244 E)
`IPR2020-01019 (Patent RE47,353 E)
`IPR2020-01033 (Patent RE47,249 E)
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`P R O C E E D I N G S
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`JUDGE CHAGNON: This is the final hearing in three IPRs
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`between Petitioner Sotera Wireless, Inc., and Patent Owner
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`Masimo Corporation. For the record the IPR numbers are
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`IPR2020-00967 for U.S. patent No. RE47,244, and IPR 2020 -
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`01019 for U.S. patent No. RE47,353 and IPR 2020 -01033 for
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`U.S. patent No. RE 47,249. Coun sel, let's go ahead and make
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`our appearances for the record and let us know who'll be
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`presenting today and we'll start with Petitioner.
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`MR. TELSCHER: Rudy Telscher, Your Honor, with the
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`law firm of Husch Blackwell on behalf of Petitioner Sotera.
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`Also with me who I don't anticipate speaking is Daisy Manning
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`but if something unique would arise I might ask her to speak but
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`I think that's unlikely, but she is with me in the room.
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`JUDGE CHAGNON: Great. Thank you. And for Patent
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`Owner.
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`MR. LARSON: Good morning, Your Honor. This is Steve
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`Larson of Knobbe Martens for Patent Owner Masimo. With me
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`is Jacob Peterson but I'll be presenting arguments on behalf of
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`Masimo today.
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`JUDGE CHAGNON: Thank you so much. We'd just like to
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`thank everybody for your flexibility in joining us remotely
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`today. I just want to go over a few reminders before we get
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`IPR2020-00967 (Patent RE47,244 E)
`IPR2020-01019 (Patent RE47,353 E)
`IPR2020-01033 (Patent RE47,249 E)
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`started. Our primary concern of course is your right to be heard
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`so if at any time during the proceeding you encounter any
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`technical or other difficulties that fundamentally undermine your
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`ability to adequately represent your client please let us know
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`immediately and adjustments will be made. Please also be sure
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`to keep yourself muted when you are not speaking so that we can
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`avoid as much background noise as po ssible. Please also
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`identify who is speaking for the benefit of the court reporter and
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`keep in mind that there may be a bit of an audio lag so try to
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`observe a pause prior to speaking to avoid speaking over others.
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`So everyone is aware I believe we do ha ve members of the public
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`that are listening today. If there's any concerns about
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`confidential information please let us know right away.
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`Per our order of July 28th, each party was going to have 60
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`minutes of total time to present arguments today. We wil l have a
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`single transcript for the hearing and it will be entered into the
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`record in each proceeding. As a reminder however, any
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`argument or evidence presented will only be considered in
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`proceedings for which that argument or evidence has a proper
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`foundation in the record. If you are presenting arguments today
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`applicable to only one of the proceedings it would be helpful to
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`us if you would identify that during your presentations.
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`Petitioner will argue first today and may reserve up to 30
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`minutes of time for rebuttal. Patent Owner will the have the
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`IPR2020-00967 (Patent RE47,244 E)
`IPR2020-01019 (Patent RE47,353 E)
`IPR2020-01033 (Patent RE47,249 E)
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`opportunity to respond to Petitioner's arguments and may also
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`reserve up to 30 minutes for surrebuttal time. Petitioner may
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`then use any reserved time to respond to arguments made during
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`Patent Owner's present ation and finally Patent Owner may use
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`any reserved time for responding to arguments made during
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`Petitioner's rebuttal time. We do have copies of your
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`demonstratives available to us so during your presentations
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`please remember to identify the demonstrative exhibit being
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`referenced clearly and specifically, for example by slide or
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`screen number. This will help us follow along and ensure clarity
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`and accuracy of the transcript . At the end of the hearing I do ask
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`that counsel for both parties stay on th e line in case the court
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`reporter has any questions for you all. Then, last reminder
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`please refrain from interrupting the opposing party during their
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`presentation. If you do have any objections you can address
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`those during your own time for presentation. So Petitioner,
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`would you like to reserve time for rebuttal today?
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`MR. TELSCHER: Yes, Your Honor, 15 minutes.
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`JUDGE CHAGNON: Fifteen minutes. Patent Owner, do
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`you know right now how much time you would like to reserve?
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`MR. LARSON: Yes. I expect to reserve 15 minutes as
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`well.
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`JUDGE CHAGNON: All right. Great. And I will be
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`keeping time here. Mr. Telscher, would you like a five minute
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`IPR2020-00967 (Patent RE47,244 E)
`IPR2020-01019 (Patent RE47,353 E)
`IPR2020-01033 (Patent RE47,249 E)
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`warning when you're coming up to your rebuttal time?
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`MR. TELSCHER: Please, Your Honor.
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`JUDGE CHAGNON: All rig ht. Great. So with that, Mr.
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`Telscher, you can get started whenever you are ready.
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`MR. TELSCHER: I'm ready, Your Honor. I'm hitting my
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`clock. So the IPRs in question here have to do with medical
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`diagnostic equipment that measures patient vital signs. The
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`concepts that are in play are an alarm or, excuse me, a vital sign
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`goes out of limits and we have either a delay or suspension.
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`There's no dispute between the parties that a delay relates to a
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`parameter going out of limits but it's not clinically si gnificant
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`and so we don’t want to bother doctors with alarms that don't
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`matter yet so we delay those clinically insignificant alarms.
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`In the context of the suspension, what a suspension is is
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`that an alarm, an active alarm has gone off and it's a clinicall y
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`relevant event a doctor has to issue treatment and the treatments
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`vary. So say, for example, I deliver a treatment that's three
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`minutes. I need a suspension time of three minutes and after
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`three minutes my alarm goes off and I see if my treatment works .
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`So those are the concepts of delays and suspensions that are in
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`play. As is probably clear from the briefing, Sotera contends
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`that delays are not properly part of the construction of the claims
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`that are at issue. We contend --
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`JUDGE CHAGNON: Counsel, can I -- counsel, this is
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`IPR2020-00967 (Patent RE47,244 E)
`IPR2020-01019 (Patent RE47,353 E)
`IPR2020-01033 (Patent RE47,249 E)
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`Judge Chagnon.
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`MR. TELSCHER: Yes, Your Honor.
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`JUDGE CHAGNON: So some of the claims in the '244
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`patent explicitly recite delay or suspension. Is the construction
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`you're arguing right now related to those claims also?
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`MR. TELSCHER: It is, Your Honor. The patents
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`themselves, and we'll get into this in quite a bit of detail in our
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`slide deck, only talked about for the first eight years -- the
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`patents themselves have never changed. They only talk about
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`activation of alarm, then a user hitting a silence button to silence
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`the alarm and then the activation of alarm once that period is run
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`and the specific purposes discussed in the patents solely relate to
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`the ability to give treatment. So we hit the silence request. The
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`doctor gives treatment and then the alarm doesn't activate until
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`the time goes away.
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`As we've also cited in the Institution decision you asked us
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`to develop the record on this issue and one of the things that we
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`cited is that in a sister reissue, the exa miner has now issued an
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`original Patent Office rejection under § 251. The examiner has
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`found that there's no support in the claims for delays that relate
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`to two different delay times for two different parameters. If you
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`look at footnote 2 of Masimo's surreply, in footnote 2 they come
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`back and say well, the same examiner who issued the original
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`Patent Office rejection is the same examiner who allowed the
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`IPR2020-00967 (Patent RE47,244 E)
`IPR2020-01019 (Patent RE47,353 E)
`IPR2020-01033 (Patent RE47,249 E)
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`'244, '249 and '353. What Masimo didn't tell you in footnote 2,
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`and this is in the record, if you g o look at Exhibits 1002 for each
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`of these patents that if you go look at page 157 of Exhibit 2 for
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`'244, if you go look at page 132 of Exhibit 2 for '353 and you go
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`look at page 157 for '249 of Exhibit 202, 1002, excuse me, you
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`will see the declaration for these reissues and as this panel well
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`knows when you have a reissue you have to tell the Patent Office
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`what you're changing and if you look at those exhibit numbers,
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`the declarations that were filed by Masimo said that they were
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`only changing the broadeni ng of the claims to deal with going
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`from a specific non-invasive sensor to an invasive sensor. So the
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`error they claimed when they filed these was related to changing
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`from a narrow non -invasive sensor to a broader non -invasive
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`sensor. They never said in their declaration that they were
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`changing from a suspension based claims to claims that now
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`would more broadly cover delays and as we pointed out in our
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`briefing, this was in our briefing throughout, the examiner who
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`wasn't apprised of what they were chang ing rejected the claims
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`under the original patent rule under Section 251 saying there is
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`no support. So as a matter of claim construction in view of the
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`declarations they've cited and in view of the patent's disclosure,
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`these patents are properly construe d as not covering delays.
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`That is our view and if you agree with our view on that,
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`then the grounds 1 through 4 are out. You would not have to
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`IPR2020-00967 (Patent RE47,244 E)
`IPR2020-01019 (Patent RE47,353 E)
`IPR2020-01033 (Patent RE47,249 E)
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`decide grounds 1 through 4 if you decide our way. Now if you
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`don't decide our way and you say we think that del ays, and by
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`the way I mean there's Federal Circuit law -- I know this panel is
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`so skilled at law -- but there is law that says where a patent, I'm
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`not talking about limiting this to a preferred embodiment, the
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`entire thrust of these patents is dire cted to activating an alarm,
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`silencing an alarm for a treatment period and when that treatment
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`period ends activating the alarm so a doctor can see or the care
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`giver can see whether or not the treatment worked. That is the
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`sum total of it. The examiner and the s ister reissue agrees with
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`this and there is no reading of these patents that would allow for
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`a construction that allowed them to cover delays for two
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`different parameters that have different delay times. There is
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`only one reference in these patents to del ays and we have the cite
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`in our briefing but it's two lines and it says in another feature,
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`not the silence feature, you can have a de lay of the same duration
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`for all parameters that are being measured. There's no disclosure
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`in these patents of any delay time that's one delay time for one
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`parameter and one delay time for another. So we do believe the
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`proper construction does not allow them to go after delays,
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`especially where their own declarations didn't even tell the
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`Patent Office that's what they were doing and then what
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`ultimately happened --
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`JUDGE WIEKER: I just want to --
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`IPR2020-00967 (Patent RE47,244 E)
`IPR2020-01019 (Patent RE47,353 E)
`IPR2020-01033 (Patent RE47,249 E)
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`MR. TELSCHER: Yes, Your Honor.
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`JUDGE WIEKER: I have one question for you. This is
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`Judge Wieker. I understand your position regarding the period
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`of time term to be construed. D o we also need to resolve the
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`construction of alarm activation threshold and alarm condition?
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`You discuss those as being related to the period of time
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`construction.
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`MR. TELSCHER: So, yes. If you notice what they've done
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`-- and again we've got slides we' ve covered in our briefing --
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`they've removed the activation of an alarm. They tried to
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`remove the activation of alarm in the fitting of a silence button
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`or silencing the alarm. So that's what they've tried to remove
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`and this is slides 23 to 24 if you wa nt to turn there. It's helpful
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`on this very point, and so the answer is yes. So we believe the
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`claims, and this is what the claim said originally and this is what
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`the spec. shows, so an alarm activation threshold if you look at
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`the patents it is only def ined as once that threshold is met and
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`actually the slide I really want to turn to is -- turn to slides 6 and
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`7 and I'll give you a moment, I know you've got to turn to them,
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`6 and 7. So if you turn to slides 6 and 7 , the patents
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`unequivocally state that when this threshold is met an alarm
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`automatically triggers and then if you turn to slide 7 it talks
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`about the case of suspension that the active alarm has to be
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`suspended. So in our view alarm activation threshold, the word
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`IPR2020-00967 (Patent RE47,244 E)
`IPR2020-01019 (Patent RE47,353 E)
`IPR2020-01033 (Patent RE47,249 E)
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`is activation, not just thresho ld, activation as taught in the
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`patents is an alarm threshold that when met leads to automatic
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`triggering of an alarm and that a delay or suspension as further
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`in the claims is a delay or suspension in response to an active
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`alarm as silencing that alarm. Does that make sense?
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`JUDGE WIEKER: Yes. I understand your position. I
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`guess I'm just trying to discern whether we can construe alarm
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`delay or suspension period of time without getting into the
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`activation threshold term itself. It seems like you import that
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`alarm activation threshold construction into the construction of
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`the period of time but I understand how they tie together .
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`MR. TELSCHER: Right. They tie together so the alarm
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`activation threshold as dictated, and by the way the words alarm
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`activation threshold are not used in the patents, but the only
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`thresholds taught are thresholds that once they're met
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`automatically trigger an alarm as I just showed you on slide 6
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`and then if you look at figure 4 of their patent which is a
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`diagram of how the sy stem works, at the top of figure 4 it shows
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`you that the alarm is off. When a parameter goes out of limits in
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`figure 4 the alarm goes on automatically and the only disclosure
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`is you can silence an active alarm.
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`So you are correct to say that an alarm activation threshold
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`once met leads to the automatic triggering of an alarm and that is
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`related to the concept of delay or suspension. Suspension is the
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`IPR2020-00967 (Patent RE47,244 E)
`IPR2020-01019 (Patent RE47,353 E)
`IPR2020-01033 (Patent RE47,249 E)
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`act of delaying an active alarm and there can't be any dispute.
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`The patents are 100 percent clear. If you look at slide 7 of our
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`deck it shows you chapter and verse how these patents talk about
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`hitting a silence button, hitting a silence initiator to deactivate
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`an active alarm.
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`JUDGE WIEKER: In Patent Owner's briefing they discuss
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`some disclosure in colu mn 4 of at least the '249 patent that talks
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`about pressing a silence button or other suspend initiator. What
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`do you make of the other suspend initiator concept?
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`MR. TELSCHER: To me I think that is used quite simpl y.
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`So when your patent -- everything that we're talking about in this
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`patent is an active alarm and silencing that alarm. So they talk
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`about you can do it with a silence button or other silence
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`initiator. So the button initiates silence or other silence initiator.
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`So, for example, you can to uch your screen and click something.
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`It's not a button. Or I type into my system silence, that's not a
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`button. So you can take the words other silence initiator, it's
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`clearly something else other than a button that does the same
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`thing as a silence butto n. If there's an active alarm and you hit
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`the silence initiator, the alarm's going off, that's why you have
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`the word silence and so it's a silence initiator. The alarm's going
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`off and I hit either a silence button or other silence initiators. So
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`they mean the same thing in that you're deactivating an active
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`alarm it's just is it a button or is it touching a screen. It could
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`IPR2020-00967 (Patent RE47,244 E)
`IPR2020-01019 (Patent RE47,353 E)
`IPR2020-01033 (Patent RE47,249 E)
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`even be voice activation. I could say silence and it deactivates
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`an active alarm. But all the teachings, and that's precisely wha t
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`the examiner found in the sister reissue. There's no teaching of
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`anything other than silencing an active alarm except for, I guess
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`I should qualify it by saying the only delay language in that
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`patent relates to the concept of one delay time for all meas ured
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`parameters. There's no disclosure of having one delay time for
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`one parameter and one delay time for another parameter.
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`JUDGE WIEKER: Thank you.
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`MR. TELSCHER: So we disagree also that the word
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`predetermine can be read into these patents. You know, I would
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`submit to the panel that if our client had an algorithm, you know,
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`and the Baker algorithm there's no dispute on this record. The
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`Baker algorithm is going to produce two different times for two
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`different parameters. So the reason Masimo's trying to read in
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`predetermine is their contention is that distinguishes an
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`algorithm.
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`But I want to be clear when we're focusing the issues for
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`the panel. We're talking about two different ways of doing
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`something if the Court construed the claim the way M asimo
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`wants. We disagree that if you did. It's trying to distinguish a
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`look-up table. So in Masimo let's talk about the claims. In
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`claims 1, 13 and 18. In the most basic form claims 13 and 18
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`require one delay or suspension time for one parameter and one
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`IPR2020-00967 (Patent RE47,244 E)
`IPR2020-01019 (Patent RE47,353 E)
`IPR2020-01033 (Patent RE47,249 E)
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`delay or suspension time for another parameter.
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`So let's talk about the example of SPO2 and blood pressure.
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`So let's say that if SP O2 drops below 90 percent, let's say it
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`drops to 80 percent. I have a delay time of three minutes. It's
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`not clinically significant enough, it's below 90 percent, it's not a
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`big enough deal that we want to alert a doctor. So I have a three
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`minute delay time and let's say blood pressure I have a delay
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`time of one minute. So my system's working and I spot my
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`system's text that SPO2 has dropped to 88. It goes oh, SPO2. It
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`goes and looks it up and then it says that the delay time is three
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`minutes. That's a look -up table.
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`Let's talk about the more complicated, you know, other
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`embodiments of what these claims cover . Claim 1 specifically
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`requires a plurality of times per a parameter. So what does that
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`mean? In the context of SPO2 I have a 90 percent threshold. I
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`drop to 88. I got three minutes. Oh, my system dropped to 86.
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`It's now two minutes. My system dropped to 84 percent
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`saturation, it's one minute. My system dropped to 82 percent,
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`it's now 30 seconds. My system drops to 80 percent which
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`everybody would agree is a very dangerous category for oxygen
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`saturation, zero delay. You got to trigger an ala rm.
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`You know, one of the things we keep talking about in the
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`context of predetermined is that the doctor knows. Well, first of
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`all delays mean the doctor doesn't even know of an alarm. But
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`IPR2020-00967 (Patent RE47,244 E)
`IPR2020-01019 (Patent RE47,353 E)
`IPR2020-01033 (Patent RE47,249 E)
`
`let's talk about what their claims cover. Claims 1, 13 and 18 al l
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`cover situations where one parameter has multiple delay times
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`and by the way if you look to column 5, lines 60 to 61 of this
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`patent it specifically says the duration is a function of the out -of-
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`limits parameter. So what the claims cover 1, 13, and 18, 1 3 and
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`18 say a time a delay or suspension time for one parameter, a
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`delay or suspension time for another parameter. A means one or
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`more. Claim 1 says a plurality which means more than one. But
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`in all of these situations their claims cover a situation wh ere you
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`have multiple times available to you as a delay time for one
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`parameter. So SPO2, we have three minutes, two minutes, one
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`minute, 30 seconds, zero. That's a look -up table. As soon as we
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`cross, as soon as that system monitors that the threshol d is below
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`or the parameter is below 90 percent saturation, so now the
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`SPO2's below 90. How much is the delay going to be? We don't
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`know in their claimed invention. You have to go look at what
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`the saturation level is. You have to measure it. Th ey keep
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`claiming that Baker -1 requires measurements. Their own system
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`requires measurements. You couldn't possibly know what the
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`saturation level or what the delay time's going to be until you
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`know the saturation level.
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`So what we're really talking about in this case is the
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`difference between an algorithm and a loo k-up table and
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`according to Masimo what they're asking this panel to do is in
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`IPR2020-00967 (Patent RE47,244 E)
`IPR2020-01019 (Patent RE47,353 E)
`IPR2020-01033 (Patent RE47,249 E)
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`the medical area where you're administering delays or
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`suspensions, what they want to say that they own the concept f or
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`two parameters having a look -up table against different times.
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`You can do it with an algorithm, you can do it with a look -up
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`table. I'm not aware of any other ways of doing it. There's two
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`and if you go look at ground 3 of our petition when we bring in
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`Baker-2 that's specifically what we say. If you look at pages 55
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`to 58 of our petition we specifically say even if they're right
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`about predetermined, somehow it doesn't read on an algorithm.
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`Baker-2 specifically shows the use of predetermined times in a
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`look-up table. What we're talking about are two of the most
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`fundamental ways to monitor variables, look -up tables or
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`algorithms and they claim that they own algorithms.
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`So, you know, with that I would like to turn to the state -of-
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`the art. So when we'r e looking at this obviously under an
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`obviousness analysis we want to know what the state -of-the art
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`is. So go look at slide 36. So on slide 36 we cover
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`(indiscernible) --
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`JUDGE CHAGNON: Counsel, sorry to interrupt you.
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`MR. TELSCHER: Yes.
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`JUDGE CHAGNON: Before we get away from that claim
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`construction I do have one question for you there. The Patent
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`Owner argues in their briefing, I'll quote what they say. They
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`say,
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`IPR2020-00967 (Patent RE47,244 E)
`IPR2020-01019 (Patent RE47,353 E)
`IPR2020-01033 (Patent RE47,249 E)
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`"The specification includes no description or embodiment
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`with a duration of a delay or suspension determined after
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`initiation of the delay or suspension. "
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`Would you agree with that characterization of the
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`specification of the challenged patents? Maybe --
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`MR. TELSCHER: I'm not understanding.
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`JUDGE CHAGNON: -- so my understanding of what
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`they're arguing there is that once the delay – with the delay when
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`the suspension starts you know how long it will be , in that you
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`may not know until right when it starts but in Baker I understand
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`the algorithm there to work so you may not know how long the
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`delay will be until you get to the end of the delay, whereas
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`Patent Owner's argument at least is that the specification of the
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`challenged patents does not describe embodiments with a delay
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`that is unknown at the start of the delay.
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`MR. TELSCHER: So we di sagree with that contention,
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`Your Honor, and it really goes right back to the example I just
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`gave you. Their claims, and this is kind of a little bit of the
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`mischief of their position. They're basing their claims off of the
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`most basic embodiment covered which is claims 13 and 18.
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`Technically they cover one delay period for one parameter and
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`one delay period for another parameter. But claim 1 specifically
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`says a plurality of delay times. Claims 13 and 18 say a delay or
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`suspension period for one paramete r and a delay or suspension
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`IPR2020-00967 (Patent RE47,244 E)
`IPR2020-01019 (Patent RE47,353 E)
`IPR2020-01033 (Patent RE47,249 E)
`
`period for another. By definition of claim constructions, claim
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`construction 101, that covers more than one delay time and so
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`the embodiments covered, and this is where they kept tricking up
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`Yanulis with talking about the most basic embodiment. The
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`embodiments, the more practical embodiments, are ones where
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`you're going to have, like my SPO2 drops to 88 and I've got three
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`minutes. My SPO2 drops to 86 percent saturation I got two. My
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`SPO2 drops to 84 and I've got one minute, and at 82 percent
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`saturation I've got 30 seconds.
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`So no, you don't know until you take them measurement
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`what the delay time's going to be and it's even more complicated
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`than that. It's undisputed that if the parameter, to start off let's
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`say that the SPO2 drops to 88 and we know we've got a three
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`minute delay period. If it goes back within limits the alarm's
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`clear, there's no delay period. We also know that if the SPO2
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`drops to 88 and we have a delay period of three minutes and al l
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`of a sudden in the next 30 seconds -- so we're going to wait three
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`minutes, but 30 seconds later it drops to 80 percent, a critical
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`event, it's going to override that and go to zero. So no, you don't
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`know the delay period.
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`Is there a difference, a sligh t difference between how an
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`algorithm works and how a look -up table works? Sure there is a
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`difference but let's talk about that. First of all, Baker -1. Let's
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`look at the abstract and Daisy, what slide is that? 70, I think 69
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`IPR2020-00967 (Patent RE47,244 E)
`IPR2020-01019 (Patent RE47,353 E)
`IPR2020-01033 (Patent RE47,249 E)
`
`is the one I want to look a t. Let's turn to 69, please. So if we
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`turn to 69 and you look to the right hand side this is the abstract
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`of Baker-1 and it says right in there in the highlighted portion to
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`the bottom right,
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`"The alarm is inhibited based upon the combination of the
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`amount of time and how much past the threshold measured value
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`is."
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`That is what Baker-1 teaches. If you go look at column 5,
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`lines 60 to 61 of the '244 it says the duration is a function of the
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`out-of-limit parameter. Both Masimo's patents and Baker are
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`premised on the identical concept of how far out of the parameter
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`are we? How below the threshold are we and how much time has
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`elapsed? And that's going to dictate the severity. If you look at
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`slide 69 Baker-1 goes on to say preferably that's based on a
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`combination of the integral or some function of an integral. So
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`Baker says yes, preferably if you're going to operate off of an
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`algorithm. But if you look at Baker -2, Baker-2 expressly says
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`that it can be predetermined times, it doesn't have to be
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`algorithmic and those again are the only two options. Under
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`ground 3 we specifically say one skilled in the art has two
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`options in implementing these delays. One, you can figure out
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`the delay time using algorithm or two, you can use a look -up
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`table. We disagree with the notion that these claims are limited
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`to embodiments that require you to know exactly what the delay
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`IPR2020-00967 (Patent RE47,244 E)
`IPR2020-01019 (Patent RE47,353 E)
`IPR2020-01033 (Patent RE47,249 E)
`
`time is the minute SPO2 goes out of the parameter. Does that
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`answer the question?
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`JUDGE CHAGNON: Yes. Thank you.
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`MR. TELSCHER: So if we turn back to the state-of-the art
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`on slide 36 because that's obviously critical to the inquiry. What
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`was known to those skilled in the art at the time of this
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`invention? Slide 36 relates to delays. This is 1968. By 1968 it
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`was already known that you sh ould delay times by specific times,
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`predetermined times and on this slide it shows, and we cite a
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`number of patents on this but I'm just giving you an example and
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`this is all in our briefing. This particular reference at page 36
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`says that you should have a large delay before one condition,
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`that's the top highlighting, and if you go down to the bottom and
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`you look at the highlight the first line says, "On the other hand
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`you should have a relatively short delay time," and if you go all
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`the way down, "thus in dicative of a dangerous condition." So as
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`of 1968 the art was already aware of we’re going to have one
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`predetermined specific delay time a less severe condition and
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`we're going to have a shorter delay time for something more
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`severe which of course is basi c medical knowledge. If my
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`patient is nearing a life and death situation and we're going to
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`have a delay it better be short and if it's a less critical condition
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`our delay can be longer. That's what the art already knew and
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`the concept of delays is well known in the art.
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`IPR2020-00967 (Patent RE47,244 E)
`IPR2020-01019 (Patent RE47,353 E)
`IPR2020-01033 (Patent RE47,249 E)
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`If you flip over to slide 37 we also show that the concept of
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`delay, specific times for delays, predetermined times for delays
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`is well known in the art and we cite many patents that talk about
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`delays and delay times. That was all well kn own in the art.
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`So how they got the patent allowed in the first place was
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`that the examiner was persuaded that he couldn't find a reference
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`that showed in the context of suspensions, because remember the
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`original paten
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