Trials@uspto.gov
`571-272-7822
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` Paper 40
`Date: November 19, 2021
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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.
`
`IPR2020-01033
`
`Patent RE47,249 E
`
`
`
`
`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`Dismissing Petitioner’s Motion to Exclude
`37 C.F.R. § 42.64
`
`
`
`
`
`

`

`IPR2020-01033
`Patent RE47,249 E
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`
`Sotera Wireless, Inc. (“Petitioner”)1 filed a Petition requesting an 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
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`Corporation (“Patent Owner”) filed a Preliminary Response. Paper 5. We
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`instituted an inter partes review of all challenged claims 1–24 on all grounds
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`of unpatentability, pursuant to 35 U.S.C. § 314. Paper 1 (“Inst. Dec.”).2
`
`After institution, Patent Owner filed a Response (Paper 23, “PO
`
`Resp.”) to the Petition, Petitioner filed a Reply (Paper 26, “Pet. Reply”), and
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`Patent Owner filed a Sur-reply (Paper 30, “PO Sur-reply”). Additionally,
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`Petitioner filed a Motion to Exclude certain deposition testimony (Paper 34,
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`“MTE”), Patent Owner filed an Opposition (Paper 35), and Petitioner filed a
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`Reply (Paper 36). An oral hearing was held on September 8, 2021, and a
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`transcript of the hearing is included in the record. Paper 39 (“Tr.”).
`
`We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a)
`
`and 37 C.F.R. § 42.73. For the reasons set forth below, Petitioner has met
`
`its burden of showing, by a preponderance of the evidence, that challenged
`
`claims 1–24 of the ’249 patent are unpatentable.
`
`
`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.
`
`2 To address institution considerations under 35 U.S.C. § 314(a), and with
`our authorization, Petitioner filed a Preliminary Reply (Paper 9) and Patent
`Owner filed a Preliminary Sur-reply (Paper 10). We do not refer to either
`paper in this Final Written Decision.
`
`
`
`2
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`

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`IPR2020-01033
`Patent RE47,249 E
`
`
`B. Related Proceedings
`
`The parties identify the following matter pending in district court and
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`related to the ’249 patent: Masimo Corp. v. Sotera Wireless, Inc., Case 3:19-
`
`cv-01100 (S.D. Cal.). Pet. 2; Paper 4, 1; see also Inst. Dec. 17–27.
`
`Patent Owner also identifies the following inter partes review
`
`proceedings involving patents asserted in the related district court matter:
`
`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
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`IPR2020-01082, challenging U.S. Patent No. 10,255,994 (institution
`
`denied).
`
`Paper 4, 2.
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`Patent Owner further identifies various applications that claim priority
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`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
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`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
`
`of U.S. Patent No. 9,153,121, filed on August 26, 2014. Id. at code (64).3
`
`
`3 The ’249 patent claims earliest priority through a series of continuation
`applications to Provisional application No. 61/084,615, filed on July 29,
`
`
`
`3
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`

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`IPR2020-01033
`Patent RE47,249 E
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`
`The ’249 patent discloses a physiological measurement system that
`
`utilizes an alarm suspend system. Id. at 4:25–26. The disclosed system
`
`includes physiological monitor 101 and noninvasive sensor 105, which
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`measures, e.g., pulse oximetry parameters, carboxyhemoglobin,
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`methemoglobin, and/or total hemoglobin. Id. at 4:25–36, Fig. 1. The
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`monitor may include a display, touch keys, and controls including “an alarm
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`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 both unnecessary disturbances to
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`patients and distractions to caregivers. Id. at 2:33–36. “Advantageously, an
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`alarm suspend system provides a parameter-dependent variation in the alarm
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`suspend duration, as described below, utilizing a common silence button or
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`other suspend initiator.” Id. at 4:60–63. “The alarm suspend period is
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`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.
`
`
`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.
`
`
`
`4
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`IPR2020-01033
`Patent RE47,249 E
`
`
`Figure 3 of the ’249 patent is reproduced below.
`
`
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`Figure 3 illustrates a flow diagram of the alarm suspend system. Id. at 4:16–
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`17. “Alarm triggers include system failures 338 and out-of-limit
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`parameters 318.” Id. at 5:43–44. Out-of-limit parameters are identified by
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`comparing sensor-measured parameters 312 to default or user-specified
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`limits 314. Id. at 5:51–52. Out-of-limit condition 318 triggers alarm 340
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`that can be suspended 328 temporarily by user-initiated silence request 322.
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`Id. at 5:52–56. Suspend durations may vary depending on the parameter.
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`Id. at 6:23–28. For example, “relatively slow treatment parameters . . . are
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`assigned relatively long suspend durations. Similarly, relatively fast
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`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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`
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`5
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`IPR2020-01033
`Patent RE47,249 E
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`
`Figure 4 of the ’249 patent is reproduced below.
`
`
`
`
`
`Figure 4 illustrates an alarm suspend embodiment “that operates
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`independently for each measured parameter that can trigger an alarm.” Id. at
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`5:66–6:1. The alarm is initially off 410, and remains off so long as the
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`measured parameter is within its set limits 412. Id. at 6:1–3. When a
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`measured parameter becomes outside set limit 414 (i.e., it is “out-of-limit”),
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`the system triggers alarm 420. Id. at 6:1–4. A user may silence 422 the
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`alarm by pressing the alarm silence button, which then suspends 430 the
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`alarm for predetermined duration 432. Id. at 6:5–10. The predetermined
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`duration “may be a function of the out-of-limit parameter.” Id. at 5:60–61.
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`When the predetermined duration expires 434, the alarm is activated again
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`
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`6
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`IPR2020-01033
`Patent RE47,249 E
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`420, until the triggering parameter becomes within limit 424 or the user
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`again silences 422 the alarm. Id. at 6:12–14. Alarm “suspend 430
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`deactivates if the measured parameter becomes within limits 438, such as
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`when the patient condition improves, or if no physiological data is
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`detected 439.” Id. at 6:14–17. Alternatively, alarm suspend override 436
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`reactivates alarm 420 when a measured parameter changes by a sufficient
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`out-of-limit amount. Id. at 6:19–23.
`
`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
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`method. All three claims have similar recitations, except that claims 13 and
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`18 do not require that the alarm hold period of time is “one of a plurality of”
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`such hold periods of time. Compare Ex. 1001, 7:39–8:17, with id. at 9:51–
`
`10:19, 10:42–11:19. Claim 1 is illustrative and reproduced below.4
`
`1. [a] A physiological measurement system comprising:
`
`[b] a noninvasive physiological sensor configured to be
`positioned on a patient and output a signal responsive to a
`physiological condition of the patient; and
`
`[c] one or more processors in communication with the
`noninvasive physiological sensor, the one or more processors
`configured to electronically:
`
`[d] determine a measurement of a physiological parameter
`based at least in part upon the signal;
`
`
`4 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.
`
`
`
`7
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`IPR2020-01033
`Patent RE47,249 E
`
`
`[e] determine whether an alarm condition exists by
`determining whether an activation threshold has been
`satisfied by the measurement of the physiological parameter;
`
`[f] [1] access an alarm hold initiator for a parameter-specific
`alarm hold period of time corresponding to the physiological
`parameter, the parameter-specific alarm hold period of time
`[2] being one of a plurality of parameter-specific alarm hold
`periods of time, the parameter-specific alarm hold period of
`time [3] 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;
`
`[g] determine that the alarm hold initiator indicates to hold an
`indication of an alarm for the alarm condition;
`
`[h] 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
`
`[i] 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 (bracketed identifiers added; see Pet. xii–xiii).
`
`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
`Sept. 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”);
`
`
`
`8
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`IPR2020-01033
`Patent RE47,249 E
`
`
`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 June 3, 2004, published Feb. 17,
`2005 (Ex. 1008, “Saidara”);
`
`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, D.Eng.
`
`(Ex. 1003) and the Declaration of Bryan Bergeron, MD (Ex. 1040). Patent
`
`Owner submits the Declaration of Jack Goldberg (Ex. 2011).
`
`The parties also rely upon deposition testimony of Dr. Yanulis
`
`(Ex. 2017 (Feb. 4, 2021, deposition); Ex. 2018 (Feb. 5, 2021, deposition);
`
`see also Exs. 2025–2026 (errata)), Dr. Bergeron (Ex. 2022 (June 24, 2021,
`
`deposition)), and Mr. Goldberg (Ex. 1042 (April 13, 2021, deposition);
`
`Ex. 1043 (April 14, 2021, deposition)).
`
`F. Asserted Grounds of Unpatentability
`
`We instituted an inter partes review based on the following grounds.
`
`Inst. Dec. 9, 52.
`
`Claim(s) Challenged
`
`35 U.S.C. §
`
`Reference(s)/Basis
`
`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
`
`
`
`103
`
`103
`
`103
`
`9
`
`Baker-1
`
`Baker-1, Batchelder
`
`Baker-1, Batchelder, Baker-2
`
`

`

`IPR2020-01033
`Patent RE47,249 E
`
`
`Claim(s) Challenged
`
`35 U.S.C. §
`
`Reference(s)/Basis
`
`3–5, 10–12, 16, 17
`
`1, 2, 6-9, 13–15, 18–24
`
`3–5, 10–12, 14, 16, 17,
`23, 24
`
`
`103
`
`103
`
`103
`
`Baker-1, Batchelder, Baker-2,
`Hickle
`
`Saidara, Malangi
`
`Saidara, Malangi, Hickle
`
`II. DISCUSSION
`
`A. Claim Construction
`
`For this inter partes review proceeding, claim terms
`
`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 the
`prosecution history pertaining to the patent.
`
`37 C.F.R. § 42.100(b) (2019).5
`
`Under the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303,
`
`1312–19 (Fed. Cir. 2005) (en banc), claim terms are given their ordinary and
`
`customary meaning, as would have been understood by a person of ordinary
`
`skill in the art at the time of the invention, in light of the language of the
`
`claims, the specification, and the prosecution history of record. See Thorner
`
`v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012).
`
`We construe terms only to the extent necessary to resolve the controversy.
`
`
`5 Although our rules state that “[a]ny prior claim construction determination
`concerning a term of the claim in a civil action, or a proceeding before the
`International Trade Commission, that is timely made of record in the inter
`partes review proceeding will be considered” (37 C.F.R. § 42.100(b)), no
`such construction is of record in this proceeding.
`
`
`
`10
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`

`

`IPR2020-01033
`Patent RE47,249 E
`
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d
`
`1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).6
`
` Overview of the Claim Construction Dispute
`
`Independent claim 1 recites, inter alia, “determin[ing] whether an
`
`alarm condition exists by determining whether an activation threshold has
`
`been satisfied by the measurement of the physiological parameter,” and
`
`“access[ing] an alarm hold initiator for a parameter-specific alarm hold
`
`period of time.” Ex. 1001, 7:53–59 (emphases added). Independent
`
`claim 18 includes similar limitations, and also recites a “second” parameter-
`
`specific alarm hold period of time. Id. at 10:55–11:5. Independent claim 13
`
`also recites first and second parameter-specific alarm hold periods of time,
`
`but does not recite an activation threshold. See, e.g., id. at 9:57–60.
`
`The arguments and evidence before us raise the question of whether
`
`the claims, when considered as a whole, require suspending activated alarms
`
`only (i.e., post-alarm suspension), or whether the claims also encompass
`
`delaying initial alarm activation (i.e., pre-alarm delays). See Pet. Reply 2.
`
`The Petition presents different grounds to account for these alternate
`
`constructions. Pet. 14–15. Specifically, the Baker-1 grounds “are directed
`
`to a construction encompassing delays/holds before an alarm is activated
`
`(i.e., pre-alarm delays),” and the Saidara grounds “are directed to temporary
`
`
`6 In our Institution Decision, we preliminary determined that the claims do
`not require a “predetermined, fixed, or pre-set” period of time. See Inst.
`Dec. 11–13. Resolution of this issue, however, is not necessary to resolve
`the controversy before us. See, e.g., PO Resp. 66–67; see infra §§ II.A, II.F;
`see Nidec, 868 F.3d at 1017.
`
`
`
`11
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`

`IPR2020-01033
`Patent RE47,249 E
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`suspensions/holds of active alarms (i.e., post-alarm suspensions).” Id. Thus,
`
`resolution of this question is dispositive as to certain asserted grounds of
`
`unpatentability.
`
`a)
`
`“alarm condition” and “activation threshold”
`
`Claim 1 recites, “determin[ing] 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; see also
`
`id. at 10:55–58 (similar in claim 18).
`
`In the Institution Decision, we preliminarily were “not persuaded that
`
`satisfying an activation threshold requires actual presentation (i.e., activation
`
`or indication) of an alarm,” i.e., triggering an audible or visual alarm
`
`indicator. Inst. Dec. 14–15.
`
`After institution, Petitioner argues that “[t]he plain meaning of alarm
`
`‘activation threshold’ necessarily requires the determination that a parameter
`
`exceeds a threshold automatically results in alarm activation.” Pet. Reply 4
`
`(citing Ex. 1040 ¶ 71) (emphasis added).
`
`In the Sur-Reply, Patent Owner agrees with our initial determination,
`
`asserting that “meeting the activation threshold is a separate requirement
`
`from activating the alarm.” PO Sur-Reply 5.
`
`b)
`
`“parameter-specific alarm hold period of time”
`
`Claim 1 recites, “access[ing] an alarm hold initiator for a parameter-
`
`specific alarm hold period of time.” Ex. 1001, 7:57–59. Petitioner contends
`
`the phrase “must be interpreted in light of the specification, which only
`
`teaches suspension of active alarms,” i.e., alarms that have already indicated
`
`an alarm condition in which a parameter exceeds an activation threshold by,
`
`e.g., emitting audible or visual indicators. Pet. 14 (citing Ex. 1003 ¶ 45).
`
`
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`12
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`IPR2020-01033
`Patent RE47,249 E
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`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 notes that, in a parallel district court proceeding,
`
`Patent Owner asserted that this claim language is satisfied by systems in
`
`which activation of an alarm, e.g., the emission of audible or visual
`
`indicators, is delayed until a measured parameter exceeds a threshold for a
`
`predetermined period of time. Id. at 13–14. 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. at 14 (citing
`
`Ex. 1003 ¶ 44).
`
`In our Institution Decision, we did not expressly construe “alarm hold
`
`period of time,” and we applied the plain and ordinary meaning of the claim
`
`language for purposes of institution. See Inst. Dec. 10–11. In applying the
`
`prior art to the claims, we determined on the preliminary record that
`
`Baker-1’s pre-alarm delay provided a sufficient showing of this claim
`
`limitation for purposes of institution. See id. at 32–35. We specifically
`
`provided instruction to the parties, however, that “[d]uring trial, the parties
`
`are encouraged to develop the record regarding the proper construction of
`
`this phrase in light of the Specification.” Id. at 11.
`
`After institution, Petitioner maintains its position that an “alarm hold
`
`period of time” is “a time period in which an activated alarm is temporarily
`
`silenced or deactivated, [which is] the specification’s only disclosure.” Pet.
`
`
`
`13
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`Reply 4–5 (citing Ex. 1001, 2:33–36, 3:1–2, 3:31–32, 3:58–60, 4:46–48,
`
`4:58–60, 5:38–41, 5:51–58, 6:3–9; Ex. 1003 ¶ 45; Ex. 1040 ¶ 73). Or, in
`
`other words, Petitioner maintains the position that the claims are limited to
`
`post-alarm suspensions, and do not encompass pre-alarm delays.
`
`Despite our instruction to do so, Patent Owner does not address the
`
`construction of “alarm hold period of time” in the Patent Owner Response.7
`
`See generally PO Resp. Patent Owner instead asserts that “[n]one of [its]
`
`arguments depend on a different pre-alarm/post-alarm construction,” and
`
`“the parties raise no patentability controversy regarding the pre-alarm or
`
`post-alarm claim scope.” PO Sur-Reply 1. Patent Owner contends that
`
`“[t]here’s no need to consider a narrow construction on which none of
`
`[Patent Owner’s] arguments depend.” Tr. 35:11–13; see id. at 34:19–35:19;
`
`see also PO Sur-Reply 1 (“The Board should not reach this construction
`
`issue.”).
`
`Nonetheless, for the first time in the Sur-Reply, Patent Owner argues
`
`that the Specification of the ’249 patent does not, in fact, support Petitioner’s
`
`proposed construction that limits the claims to only post-alarm suspensions,
`
`but rather supports its apparent contention that the claims also encompass
`
`pre-alarm delays. See PO Sur-Reply 2–6 (citing Ex. 1001, 3:58–4:9, 4:60–
`
`63, 5:61–65, 6:15–20, 6:38–41; Ex. 1042, 118:3–120:20; Ex. 2022, 22:13–
`
`23:2, 23:8–20, 65:20–66:6, 174:2–10).
`
`
`7 See Tr. 40:5–16 (Patent Owner’s counsel agreeing that Patent Owner was
`on notice of the Board’s instruction to develop the record on this issue but,
`instead, concluding that “It’s not something that needs to be developed”);
`see also id. at 39:7–40:16 (larger discussion).
`
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`c)
`
`Explicit Construction is Appropriate
`
`Despite Patent Owner’s contention that we need not address this
`
`question of claim construction, the law is clear that obviousness under
`
`35 U.S.C. § 103 is a “two-step inquir[y].” Medichem, S.A. v. Rolabo, S.L.,
`
`353 F.3d 928, 933 (Fed. Cir. 2003); see also Tr. 65:5–16. The first step “is a
`
`proper construction of the claims. . . . The second step in the analys[i]s
`
`requires a comparison of the properly construed claim to the prior art.” Id.
`
`While it is also true that only those claim terms that are in controversy need
`
`to be construed, and only to the extent necessary to resolve the controversy,
`
`see Nidec, 868 F.3d at 1017, a party’s allegation that terms are not disputed,
`
`or that construction is unnecessary because resolution of a different issue
`
`may be dispositive, does not preclude construction. This is especially so
`
`where resolution of a particular claim construction issue also is dispositive to
`
`allegations of unpatentability. See Tr. 8:20–9:1 (Petitioner’s counsel
`
`indicating that if the Board agrees with Petitioner’s contention that “these
`
`patents are properly construed as not covering [pre-alarm] delays . . . then
`
`the grounds 1 through 4 [(i.e., the Baker-1 grounds)] are out. You would not
`
`have to decide grounds 1 through 4 if you decide our way” on the claim
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`construction question.); id. at 35:3–6 (Patent Owner’s counsel noting that
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`“[Patent Owner] has never disputed that the claims will cover both
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`[pre-alarm delays and post-alarm suspensions] and in fact none of [Patent
`
`Owner’s] arguments depend on a narrower construction. Not a single page
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`of [Patent Owner’s] briefs makes an argument based on the narrow
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`construction.”); id. at 39:10–40:16 (Patent Owner’s counsel discussing the
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`strategic decision not to address the issue related to Petitioner’s proposed
`
`narrow construction).
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`15
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`IPR2020-01033
`Patent RE47,249 E
`
`
`For purposes of this Decision, to resolve the issues raised by
`
`Petitioner’s asserted grounds, we construe “alarm condition,” “activation
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`threshold,” and “alarm hold period of time” only to the extent that we find
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`that the claims, when considered as a whole, do not encompass pre-alarm
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`delays. Our reasoning follows.
`
` The Parties’ Reliance on the ’249 Patent Specification
`
`Both Petitioner and Patent Owner contend that the Specification of the
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`’249 patent supports its respective position.
`
`a)
`
`Petitioner’s Position
`
`As Petitioner notes, “[n]either ‘activation threshold’ nor ‘alarm hold
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`period of time’ appear in the specification” of the ’249 patent. Pet. Reply 3.
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`Petitioner contends that the Specification “only teaches suspension of
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`active alarms.” Pet. 14 (citing Ex. 1003 ¶ 45). According to Petitioner,
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`The specification only describes a system that (1) compares a
`measured parameter to set limits; (2) automatically activates an
`alarm when the parameter is out-of-limits; (3) thereafter,
`suspends the activated alarm for a “parameter-specific” duration
`in response to a user request; and (4) “resumes,” “retriggers,” or
`“reactivates” the alarm after the suspension duration.
`
`Pet. Reply 3 (citing, inter alia, Ex. 1003 ¶¶ 21–25, 35, 45; Ex. 1040 ¶ 64).
`
`Petitioner cites the Abstract in support of its claim construction
`
`position (see id.), which teaches, “An alarm suspend system utilizes an
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`alarm trigger responsive to physiological parameters and corresponding
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`limits on those parameters. . . . Audible and visual alarms respond to the
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`alarm trigger. An alarm silence button is pressed to silence the audible
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`alarm for a predetermined suspend time.” Ex. 1001, code (57) (emphasis
`
`added).
`
`
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`16
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`IPR2020-01033
`Patent RE47,249 E
`
`
`Petitioner also cites numerous portions of the ’249 Specification in
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`support of its position that the claims are limited to suspensions of active
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`alarms (see Pet. Reply 2–5). For example, Petitioner relies upon the
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`Specification’s disclosure that “alarms are triggered by out-of-limit
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`parameters and system failures.” Ex. 1001, 2:18–19.
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`Petitioner also relies upon the Specification’s teachings that, when an
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`active alarm is suspended by a user, it will remain suspended for a
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`predetermined period of time but will be reactivated if the triggering
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`condition persists. Id. at 2:33–38. Specifically, the Specification teaches
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`that “[a]n audible alarm may be temporarily suspended by pressing an alarm
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`silence button so as to prevent unnecessary disturbance to the patient and
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`distraction of the caregiver. During alarm suspension, visual alarms remain
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`active. If an alarm condition persists after a predetermined alarm suspend
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`period, the audible alarm resumes.” Id. (emphases added).
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`The Specification further explains that the suspension period “is
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`typically long enough to give a caregiver sufficient time to intervene with
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`appropriate patient treatment yet short enough to ensure that patient health is
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`not endangered if intervention is ineffective. Id. at 2:38–42; see also id. at
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`2:55–60 (“When patient treatment time exceeds the maximum alarm
`
`suspend period, an audible alarm will constantly reactivate.”).
`
`Petitioner additionally relies upon the following portions of the
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`Specification, which are consistent with the disclosures discussed above; the
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`cited portions of the Specification repeatedly describe that an alarm is
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`automatically triggered when an activation threshold is passed (indicative of
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`an alarm condition), the activated alarm may be suspended by a user, and the
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`alarm will reactivate if the alarm condition persists:
`
`
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`17
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`

`

`IPR2020-01033
`Patent RE47,249 E
`
`
`One aspect of an alarm suspend system for silencing the
`alarms is an alarm trigger responsive to any of various
`parameters and predetermined limits corresponding to the
`parameters . . . . An audible alarm is responsive to the alarm
`trigger. An alarm silence button is actuated so as to suspend the
`audible alarm. A timer tracks the duration of the suspended
`alarm and is initiated by actuation of an alarm silence button.
`The timer retriggers the audible alarm after the timed duration
`has lapsed/expired.
`
`Ex. 1001, 2:61–3:6 (emphases added).
`
`Another aspect of an alarm suspend system is a partition
`of measured parameters into at least a first group and a second
`group. An audible alarm is triggered if at least one parameter is
`outside of predetermined limits. The audible alarm is suspended
`in response to a silence request. A first duration is associated
`with the first group and a second duration is associated with the
`second group. The audible alarm is reactivated after at least one
`of the first duration and the second duration.
`
`Id. at 3:28–36 (emphases added).
`
`A further aspect of an alarm suspend system deactivates
`an audible alarm for one of a short duration and a long duration
`according to the alarm-triggering parameter. A first group of
`parameters is associated with the short duration and a second
`group of parameters is associated with the long duration. The
`first group and the second group are partitioned according to a
`fast treatment time and a short treatment time associated with the
`parameters.
`
`Id. at 3:58–65 (emphasis added).
`
`The speaker 150 provides an audible alarm in response to
`physiological measurements that violate preset conditions, such
`as an out-of-limit parameter, as well as system failures, such as
`a low battery condition. The controls 140 include an alarm
`silence button 144 that is pressed to temporarily suspend out-of-
`limit parameter alarms and system alarms, such as low battery.
`
`Id. at 4:42–48 (emphases added).
`
`
`
`18
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`

`IPR2020-01033
`Patent RE47,249 E
`
`
`The alarm silence button 144 is pressed to temporarily suspend
`audible alarms. 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 4:58–63 (emphasis added).
`
`As shown in FIG. 3, measured parameters 312 are
`compared 310 to default or user-specified limits 314. An out-of-
`limit condition 318 triggers an alarm 340. An alarm
`suspend 328 is user-initiated by a silence request 322. This may
`be a press of a silence button 144 (FIG. 1) on a monitor front
`panel 110 (FIG. 1). In an embodiment, the alarm suspend 328
`silences audible alarms and modifies the display of visual
`alarms. The alarm suspend 328 is based on a timer 320, which
`ends the alarm suspend 328 after a predetermined duration 324.
`The duration 324 may be a function of the out-of-limit
`parameter 312. In an advantageous embodiment, the duration
`324 relates to, or is a function of, the treatment time for the alarm-
`triggering parameter so as to avoid nuisance alarms while
`maintaining alarm integrity.
`
`Id. at 5:51–65 (emphases added).
`
`FIG. 4 illustrates an alarm suspend embodiment 400 that
`operates independently for each measured parameter that can
`trigger an alarm. An alarm is initially off 410. The alarm
`remains off as long as the parameter is within its set limits 412.
`If a parameter is measured outside of its set limits 414, an alarm
`is triggered 420. The alarm may audible, visual or both audible
`and visual. A user can request to silence the alarm by pressing
`an alarm silence button 144 (FIG. 1), for example. The silence
`request 422 suspends the alarm 430 which turns off audible
`alarms but, in an embodiment, does not deactivate visual alarms.
`The audible alarm remains suspended 430 for a predetermined
`duration 432. When the suspend duration has passed, the alarm
`suspend expires 434 and audible alarms are once again
`activated 420. The alarm remains on 428 until the triggering
`
`
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`IPR2020-01033
`Patent RE47,249 E
`
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`parameter is within limits 424 or a user once again requests
`silence 422.
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`Id. at 5:66–6:14 (emphases added).
`
`b)
`
`Patent Owner’s Position
`
`Patent Owner, in turn, argues that the Specification “explains how a
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`processor would immediately suspend an alarm rather than activate an
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`alarm.” PO Sur-Reply 3. In support, Patent Owner cites the following
`
`portions of the Specification (see id.):
`
`A further aspect of an alarm suspend system deactivates
`an audible alarm for one of a short duration and a long duration
`according to the alarm-triggering parameter. A first group of
`parameters is associated with the short duration and a second
`group of parameters is associated with the long duration. The
`first group and the second group are partitioned according to a
`fast treatment time and a short treatment time associated with the
`parameters. An override reactivates the audibl