Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 12
`Date: December1, 2020
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SOTERA WIRELESS, INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`____________
`
`IPR2020-01054
`Patent 9,872,623 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 12
`Date: December1, 2020
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SOTERA WIRELESS, INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`____________
`
`IPR2020-01054
`Patent 9,872,623 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`IPR2020-01054
`Patent 9,872,623 B2
`
`
`INTRODUCTION
`
`I.
`A. Background and Summary
`Sotera Wireless, Inc. (“Petitioner”)1 filed a Petition requesting inter
`
`partes review of claims 1–20 (“the challenged claims”) of U.S. Patent No.
`9,872,623 B2 (“the ’623 patent,” Ex. 1001). Paper 1 (“Pet.”). Masimo
`Corporation (“Patent Owner”) filed a Preliminary Response to the Petition.
`Paper 6 (“Prelim. Resp.”). Pursuant to our authorization (Paper 7),
`Petitioner filed a reply to Patent Owner’s Preliminary Response (Paper 10,
`“Reply”) to address the discretionary factors set forth in Apple Inc. v. Fintiv,
`Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential)
`(“Fintiv Order”), to which Patent Owner filed a sur-reply (Paper 11,
`“Sur-reply”).
`
`We have authority to determine whether to institute inter partes
`review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4. An inter partes review
`may not be instituted “unless the Director determines . . . there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also
`37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the
`Director.”). Having considered the arguments and evidence presented by
`Petitioner and Patent Owner, we determine, for the reasons set forth below,
`that Petitioner has demonstrated a reasonable likelihood that at least one
`challenged claim in the Petition is unpatentable based on at least one of the
`
`
`1 Petitioner identifies Hon Hai Precision Industry Co., Ltd. as a real party-in-
`interest “because Hon Hai agrees to be bound by the estoppel provisions of
`35 U.S.C. § 315(e).” Pet. 1.
`
`2
`
`
`
`IPR2020-01054
`Patent 9,872,623 B2
`
`grounds presented. As discussed below, we institute an inter partes review
`of all of the challenged claims on all grounds set forth in the Petition.
`The following findings of fact and conclusions of law are not final,
`but are made for the sole purpose of determining whether Petitioner meets
`the threshold for initiating review. Any final decision shall be based on the
`full trial record, including any response timely filed by Patent Owner. Any
`arguments not raised by Patent Owner in a timely-filed response shall be
`deemed waived, even if they were presented in the Preliminary Response.
`
`B. Related Proceedings
`The parties identify Masimo Corp. v. Sotera Wireless, Inc., Case No.
`3:19-cv-01100-BAS-NLS (S.D. Cal.), served on June 13, 2019, as a related
`proceeding involving the ’623 patent. Pet. 2; Paper 5, 1. Patent Owner also
`identifies the following inter partes review proceedings involving patents
`asserted in the parallel proceeding:
`IPR2020-00912, challenging U.S. Patent No. 10,213,108;
`IPR2020-00954, challenging U.S. Patent No. 9,788,735;
`IPR2020-00967, challenging U.S. Patent No. RE47,244;
`IPR2020-01019, challenging U.S. Patent No. RE47,353;
`IPR2020-01015, challenging U.S. Patent No. 9,795,300;
`IPR2020-01033, challenging U.S. Patent No. RE47,249;
`IPR2020-01078, challenging U.S. Patent No. RE47,218; and
`IPR2020-01082, challenging U.S. Patent No. 10,255,994.
`Paper 5, 2.
`Patent Owner further identifies various applications that claim priority
`to, or share a priority claim with, the ’623 patent. Id. at 1–2.
`
`3
`
`
`
`IPR2020-01054
`Patent 9,872,623 B2
`
`
`C. The ’623 Patent
`The ʼ623 patent is titled “Arm Mountable Portable Patient Monitor.”
`Ex. 1001, code (54). The ’623 patent claims priority through a series of
`continuation applications to Provisional Application No. 60/367,428, filed
`on March 25, 2002. Id. at codes (63), (60). The ’623 patent is directed to
`“[a]n arm mountable portable monitoring device configured for both on
`patient monitoring of parameter measurements using one or more sensors
`operatively connected to the portable patient monitoring device and wireless
`transmission of parameter measurements.” Id. at code (57). As is further
`described in the Abstract:
`The arm mountable portable patient monitoring device includes
`a pulse oximetry sensor configured to be wrapped around a digit
`of a patient, a housing having a size and shape configured for
`mounting to a lower arm of the patient, and a strap mountable to
`the back side of the housing and configured to secure the housing
`to the lower arm of the patient. The housing includes a display,
`a first sensor port positioned on the housing to face toward a hand
`of the patient, second and third sensor ports, a battery, signal
`processing arrangements
`to cause display of parameter
`measurements, and a transmitter to transmit information
`indicative of the measurements.
`
`Id.
`
`The ’623 patent additionally expresses that a drawback to
`“[c]onventional physiological measurement systems,” is the requirement of a
`“patient cable connection between sensor and monitor.” Id. at 2:22–24.
`And describes the problems related with “disconnection of monitoring
`equipment and a corresponding loss of measurements,” when needing to
`
`4
`
`
`
`IPR2020-01054
`Patent 9,872,623 B2
`
`move patients. Id. at 2:24–28. A goal of the ’623 patent is to allow wireless
`pulse oximetry monitoring. Id. at 2:34–38; compare Fig 12, with Fig. 3.
`Figure 3 of the ’623 patent is reproduced below.
`
`Figure 3 above illustrates “a physiological measurement
`
`communications adapter.” Id. at 4:3–4. Communications adapter 300
`includes sensor module 400 and monitor module 500. Id. at 4:49–50.
`
`
`
`
`2 Figure 1 is labeled “Prior Art” and is described as “an illustration of a prior
`art pulse oximetry system.” Id. at 3:66–67.
`5
`
`
`
`IPR2020-01054
`Patent 9,872,623 B2
`
`
`Figure 4A of the ’623 patent is reproduced below:
`
`
`Figure 4A above shows an embodiment of sensor module 400. Id. at
`
`5:28–29. Sensor module 400 includes wrist-mounted module 410 includes
`wrist strap 411, case 412 and auxiliary cable 420. Id. at 5:29–31. Auxiliary
`cable 420 mates to sensor connector 318 and provides a wired link between
`sensor 310 and wrist-mounted module 410. Id. at 5:35–38. Wrist-mounted
`module 410 may have display 415 that shows sensor measurements, module
`status, and other visual indicators, such as monitor status. Id. at 5:39–42. In
`certain embodiments wrist-mounted module 410 may have other input or
`output ports that download software, configure the module, or provide a
`wired connection to other measurement instruments or computing devices.
`Id. at 5:56–62. In such embodiments, the wearable device can communicate
`with multiple sensors, and a multiple parameter sensor module with sensor
`
`6
`
`
`
`IPR2020-01054
`Patent 9,872,623 B2
`
`interfaces and signal processors may be used as depicted in Figure 13
`(reproduced below). Id. at 11:54–67.
`
`
`
`Figure 13 depicts a functional block diagram of a sensor module
`configured for multiple sensors. Id. at 4:26–27.
`
`D. Illustrative Claim
`Claim 1 is illustrative of the claims at issue and is reproduced below
`in chart form with Petitioner’s added designations for ease of discussion in
`this Decision:
`Designation
`Claim 1
`Preamble
`1(a)
`
`Claim Language
`An arm mountable portable patient monitoring device
`configured for both on-patient monitoring of
`parameter measurements using one or more sensors
`operatively connected to the portable patient
`monitoring device and wireless transmission of
`parameter measurements, the portable patient
`monitoring device comprising:
`
`7
`
`
`
`IPR2020-01054
`Patent 9,872,623 B2
`
`
`Designation
`Limitation
`1(b)
`
`1(c)
`
`1(d)
`
`1(e)
`1(f)
`
`1(g)
`
`1(h)
`
`1(i)
`
`1(j)
`
`1(k)
`
`1(l)
`
`Claim Language
`a pulse oximetry sensor configured to be wrapped
`around a digit of a patient, the pulse oximetry sensor
`including at least:
`a light emitter configured to emit light into a tissue
`site of the digit of the patient;
`a light detector configured output a signal responsive
`to at least a portion of the emitted light after
`attenuation by tissue of the tissue site; and
`a tail configured to electrically convey the signal;
`a housing configured for, and having a size and shape
`configured for, mounting to a lower arm of the
`patient, the housing including at least:
`a display positioned on a front side of the housing
`that is opposite a back side of the housing, the display
`configured to show a status of the portable patient
`monitoring device and one or more parameter
`measurements so as to be viewable by a user;
`a first sensor port positioned on a first side of the
`housing, the first side of the housing configured to
`face toward a hand having the digit of the patient
`under measurement,
`the first sensor port configured to physically couple
`to the tail of the pulse oximetry sensor and to
`electrically receive the signal from the pulse oximetry
`sensor,
`wherein the first sensor port is positioned on the first
`side of the housing such that, when the tail is
`physically coupled to the first sensor port, the tail
`extends from the first sensor port along an axis
`perpendicular to a face of the first side of the housing
`on which the first sensor port is positioned;
`a second sensor port configured to receive
`information from an EKG sensor arrangement via a
`wired connection;
`a third sensor port configured to receive information
`from a blood pressure sensor arrangement via a wired
`connection;
`
`8
`
`
`
`IPR2020-01054
`Patent 9,872,623 B2
`
`
`Designation
`1(m)
`
`1(n)
`
`1(o)
`1(p)
`
`1(q)
`
`1(r)
`1(s)
`
`1(t)
`
`Claim Language
`a rechargeable battery configured to power the
`portable patient monitoring device including the
`pulse oximetry sensor;
`one or more signal processing arrangements
`configured to:
`receive the signal from the pulse oximetry sensor;
`derive, based on the signal, measurements of oxygen
`saturation and pulse rate; and
`cause to be displayed, on the display, the
`measurements of oxygen saturation and pulse rate;
`and
`a transmitter configured to:
`wirelessly transmit a transmit signal indicative of the
`measurements of oxygen saturation and pulse rate to
`a separate computing device configured to display the
`measurements of oxygen saturation and pulse rate;
`and
`a strap mountable to the back side of the housing, the
`strap configured to secure the housing to the lower
`arm of the patient.
`
`Ex. 1001, 13:14–14:6.
`Independent claims 17 and 20 (also challenged) are similar to claim 1
`and are each directed to an “arm mountable portable patient monitoring
`device.” Id. at 16:12–13, 17:59–60.
`
`E. Evidence
`Petitioner relies on the following references:
`Reference
`U.S. Patent No. 6,840,904, issued Jan. 11, 2005 (“Goldberg”)
`PCT Publication No. WO 00/42911, published on July 27, 2000
`(“Kiani”)
`EP0880936A2, published on Dec. 2, 1998 (“Akai”)
`
`Exhibit
`1005
`1006
`
`1007
`
`9
`
`
`
`IPR2020-01054
`Patent 9,872,623 B2
`
`
`Reference
`U.S. Patent No. 5,919,141, issued on July 6, 1999 (“Money”)
`U.S. Patent No. 4,425,921, issued on Jan. 17, 1984 (“Fujisaki”)
`PCT Publication No. WO 99/13698, published Mar. 18, 1999
`(“Estep”)
`PCT Publication WO 96/15594, published on May 23, 1996
`(“Taylor”)
`U.S. Patent No. 5,793,413, issued Aug. 11, 1998 (“Hylton”)
`
`Exhibit
`1008
`1009
`1010
`
`1011
`
`1012
`
`Petitioner also relies on the Declaration of George E. Yanulis
`
`(Ex. 1003) in support of its arguments.
`
`F. Asserted Grounds of Unpatentability
`Petitioner asserts that the challenged claims of the ’623 patent are
`
`unpatentable based on the following grounds (Pet. 6):
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`1, 2, 4, 5, 12, 14–17
`103(a)
`Goldberg, Kiani
`3
`103(a)
`Goldberg, Kiani, Fujisaki
`6–11, 13, 18, 19
`103(a)
`Goldberg, Kiani, Money
`20
`103(a)
`Goldberg, Kiani, Money,
`Fujisaki, Estep, Taylor, Hylton
`Money, Kiani, Akai
`Money, Kiani, Akai, Fujisaki
`Money, Kiani, Akai, Fujisaki,
`Estep, Taylor, Hylton
`
`103(a)
`103(a)
`103(a)
`
`1, 2, 4–19
`3
`20
`
`
`
`II. ANALYSIS
`A petition must show how the challenged claims are unpatentable
`under the statutory grounds it identifies. 37 C.F.R. § 42.104(b)(4).
`
`10
`
`
`
`IPR2020-01054
`Patent 9,872,623 B2
`
`Petitioner must show “there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” 35 U.S.C. § 314(a).
`
`A. Discretion Under 35 U.S.C. § 314(a)
`Patent Owner, relying on our precedential decisions in NHK3 and the
`Fintiv Order, contends that we should exercise our discretion under
`35 U.S.C. § 314(a) to deny institution based on the status of the parallel
`district court litigation. See Prelim Resp. 14–21.
`
`1. Legal Standards
`Under 35 U.S.C. § 314(a), the Director has discretion to deny
`institution of an inter partes review. Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is
`a matter committed to the Patent Office’s discretion.”); SAS Inst. Inc. v.
`Iancu, 138 S. Ct. 1348, 1356 (2018) (“SAS”) (“[Section] 314(a) invests the
`Director with discretion on the question whether to institute review.”
`(emphasis omitted)); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367
`(Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute
`an IPR proceeding.”).
`In determining whether to exercise discretion to deny institution under
`35 U.S.C. § 314(a), the Board considers an early trial date in related
`litigation as part of an assessment of all relevant circumstances of the case,
`including the merits, in an effort to balance considerations such as system
`
`
`3 NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8
`(PTAB Sept. 12, 2018) (precedential).
`11
`
`
`
`IPR2020-01054
`Patent 9,872,623 B2
`
`efficiency, fairness, and patent quality. Fintiv Order 5–6; see also NHK,
`Paper 8 at 19–20 (denying institution relying, in part, on § 314(a) because
`the parallel district court proceeding was scheduled to finish before the
`Board reached a final decision).
`When considering an early trial date in related litigation, the Board
`evaluates the following factors (“Fintiv factors”):
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the parallel
`proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Fintiv Order 5–6. In evaluating these factors, “the Board takes a holistic
`view of whether efficiency and integrity of the system are best served by
`denying or instituting review.” Id. at 6.
`
`2. Factual Background
`The progress of the related district court litigation is pertinent to
`discretion under 35 U.S.C. § 314(a). We summarize the progress as follows.
`On June 12, 2019, Patent Owner filed a Complaint (Ex. 1014) against
`Petitioner in the U.S. District Court for the Southern District of California.
`Petitioner has filed a Motion to Stay the District Court proceedings
`(Ex. 1036) and Patent Owner opposed (Ex. 2001). According to the parties,
`
`12
`
`
`
`IPR2020-01054
`Patent 9,872,623 B2
`
`the District Court has not yet ruled on the Motion. See Prelim. Resp. 14–15;
`Reply 2–3. The District Court has vacated all Markman deadlines, including
`the previously scheduled November 3, 2020, Markman hearing, pending its
`decision on Petitioner’s Motion to Stay. See Ex. 1037.
`Patent Owner served its infringement contentions on January 24,
`2020. Ex. 2002, 1–2; see Prelim. Resp. 18–19. Petitioner served its
`invalidity contentions on March 20, 2020. Ex. 2004; see Prelim. Resp. 17.
`On June 5, 2020, Petitioner filed the Petition in this proceeding. See
`Paper 1.
`Per the court’s Scheduling Order, which was modified on October 6,
`2020, fact discovery closes on February 12, 2021, and expert discovery
`closes on May 7, 2021. Ex. 2009, 3. The Scheduling Order also includes a
`trial date of November 30, 2021. Id. at 4.
`Petitioner filed a stipulation in the District Court. Ex. 1038. The
`stipulation states that if the Board institutes inter partes review, Petitioner
`“will not pursue in [the District Court] the specific grounds [asserted in the
`inter partes review], or on any other ground . . . that was raised or could
`have been reasonably raised in an IPR (i.e., any ground that could be raised
`under §§ 102 or 103 on the basis of prior art patent or printed publications).”
`Id. at 6–7.
`
`3. Analysis of the Fintiv Factors
`With this background, we consider each of the factors set forth in the
`Fintiv Order. We then weigh the factors and take a holistic view of whether
`efficiency and integrity of the patent system are best served by denying or
`instituting review.
`
`13
`
`
`
`IPR2020-01054
`Patent 9,872,623 B2
`
`
`(1) Factor 1: whether a stay exists or is likely to be granted if a
`proceeding is instituted
`Petitioner has filed a Motion to Stay, but the District Court has not yet
`ruled on the motion. Prelim. Resp. 15; Reply 2–3. Patent Owner contends
`that a “stay is unlikely.” Prelim. Resp. 15. In particular, Patent Owner
`contends that many courts, including the Southern District of California
`finds that direct competition between the parties in the relevant market
`evidences significant prejudice and weighs against a stay. Id. Petitioner
`notes, however, that in the order vacating all Markman deadlines, the
`“[District] Court noted that any rescheduled Markman date may not be
`necessary, depending on how the [District] Court rules on the motion to
`stay.” Reply 3 (citing Ex. 1037).
`Because the District Court has not ruled on the pending motion to
`stay, we determine that this factor does not weigh for or against denying
`institution in this case. See Apple Inc. v. Fintiv, Inc., IPR2020-00019,
`Paper 15 at 12 (PTAB May 13, 2020) (informative) (“Fintiv DI”); Sand
`Revolution II, LLC v. Cont’l Intermodal Group – Trucking LLC, IPR2019-
`01393, Paper 24 at 7 (PTAB June 16, 2020) (informative) (“Sand
`Revolution”).
`
`(2) Factor 2: proximity of the court’s trial date to the Board’s
`projected statutory deadline
`As noted above, trial in the parallel proceeding currently is set to
`begin on November 30, 2021. Ex. 2009, 4. Patent Owner contends that this
`trial date means there is little opportunity for efficiency or simplification
`with IPR proceedings because the final written decision date will still come
`during or after trial. Sur-reply 2–3. Petitioner contends, on the other hand,
`
`14
`
`
`
`IPR2020-01054
`Patent 9,872,623 B2
`
`that because the final written decision will issue close to the scheduled trial
`date, and all Markman deadlines have been indefinitely vacated, this factor
`strongly weighs in favor of instituting inter partes review. Reply 3–4.
`Petitioner also notes that the District Court “has already amended its case
`management order twice—including extending the trial date two months.”
`Id. at 3.
`“If the court’s trial date is earlier than the projected statutory deadline,
`the Board generally has weighed this fact in favor of exercising authority to
`deny institution under NHK.” Fintiv Order 9. On the other hand, “[i]f the
`court’s trial date is at or around the same time as the projected statutory
`deadline or even significantly after the projected statutory deadline, the
`decision whether to institute will likely implicate other factors discussed
`herein, such as the resources that have been invested in the parallel
`proceeding.” Id.
`Here, the trial is scheduled to begin around the same time as our
`deadline to reach a final decision. Thus, we find that this factor does not
`weigh for or against denying institution in this case.
`
`(3) Factor 3: investment in the parallel proceeding by the court
`and parties
`Patent Owner contends that “the parties and [District] Court have
`already invested substantial resources litigating the issues before the court—
`including patent validity.” Prelim. Resp. 18. As noted above, the parties
`have already served their respective infringement contentions and initial
`invalidity contentions. However, as Petitioner points out, all Markman
`deadlines have been vacated, including the Markman hearing. Reply 4.
`Moreover, much other work remains in the parallel proceeding as it relates
`
`15
`
`
`
`IPR2020-01054
`Patent 9,872,623 B2
`
`to invalidity: fact discovery is ongoing, expert reports are not yet due, and
`substantive motion practice is yet to come. Id. Thus, although the parties
`and the District Court have invested some effort in the parallel proceeding to
`date, further effort remains to be expended in this case before trial. The
`facts here are similar to those in both recent Board informative decisions.
`See Sand Revolution 11; Fintiv DI 14; see also Fintiv Order 10 (“If, at the
`time of the institution decision, the district court has not issued orders related
`to the patent at issue in the petition, this fact weighs against exercising
`discretion to deny institution under NHK.”).
`The Fintiv Order also recognizes that “notwithstanding that a
`defendant has one year to file a petition, it may impose unfair costs to a
`patent owner if the petitioner, faced with the prospect of a looming trial date,
`waits until the district court trial has progressed significantly before filing a
`petition at the Office.” Fintiv Order 11. The Order instructs the parties to
`explain facts relevant to the Petition’s timing. Id.; see also id. at 11–12
`(considering timing of the Petition as part of the third Fintiv factor). Patent
`Owner notes that Petitioner waited until just before the statutory deadline to
`file its Petition, arguing that the Petition includes substantially the same
`arguments presented in its March 20, 2020, invalidity contentions. Prelim.
`Resp. 16–17. Petitioner, on the other hand, contends that it “was not dilatory
`in filing this petition.” Reply 5. Petitioner explains that the parties spent six
`months after the complaint was filed “engaged in settlement discussions.”
`Id. Further, Petitioner notes that its initial invalidity contentions were filed
`on March 20, 2020, which was “concurrent with the nationwide shift to
`‘work from home’ and the closing of counsels’ public offices.” Id.
`Petitioner contends that, thereafter, it “diligently worked to draft IPR
`
`16
`
`
`
`IPR2020-01054
`Patent 9,872,623 B2
`
`petitions challenging 9 patents and 183 claims,” including the present
`Petition. Id. Patent Owner responds that “[n]ormal settlement discussions
`. . . cannot excuse” the delay and reiterates its contention that Petitioner
`“waited until just before the statutory deadline to file its Petition.”
`Sur-reply 3.
`Petitioner filed its Petition approximately two and a half months after
`serving its initial invalidity contentions, and approximately one week before
`the statutory deadline. Based on the facts present here, we find that
`Petitioner’s explanation for the timing of the Petition is reasonable,
`notwithstanding the closeness to the statutory deadline, particularly in view
`of the large number of patents and claims challenged in this and Petitioner’s
`other related petitions for inter partes review, as well as the increased
`difficulty in preparing the Petitions due to concurrent office closures. See
`Reply 5; supra Section I.B (identifying related inter partes review
`proceedings).
`Due to the relatively limited investment in the parallel proceeding to
`date and the fact that the timing of the Petition was reasonable, we find that
`this factor weighs in favor of not exercising discretion to deny institution
`under 35 U.S.C. § 314(a).
`
`(4) Factor 4: overlap between issues raised in the petition and
`in the parallel proceeding
`Patent Owner contends that Petitioner relies upon the same two
`primary references and substantially the same invalidity arguments, under
`the same claim construction standard, as in the District Court. Prelim.
`Resp. 19; Ex. 2004 (Invalidity Contentions).
`
`17
`
`
`
`IPR2020-01054
`Patent 9,872,623 B2
`
`
`Petitioner notes that the Petition seeks review of all claims of the ’623
`patent, not merely those at issue in the parallel proceeding. Reply 6; see
`also Ex. 2004, 1 (claims 1–19 of the ’623 patent are asserted in the parallel
`proceeding). Further, as noted above, Petitioner has filed in the District
`Court “a stipulation that, if IPR is instituted, they will not pursue in the
`District Court Litigation any ground raised or that could have been
`reasonably raised in an IPR.” Reply 6; Ex. 1038. Petitioner contends that,
`because of this stipulation, there will be no overlap of invalidity issues
`between the parallel district court proceeding and this inter partes review.
`Reply 6.
`Patent Owner contends that the stipulation is “unclear” as to whether
`Petitioner reserves the right to proceed based on other references cited in the
`invalidity contentions. Sur-reply 4. We disagree with Patent Owner’s
`contention here. The portion of the stipulation quoted by Patent Owner,
`states in full that the “stipulation is not intended . . . to limit [Petitioner’s]
`ability to assert invalidity of the asserted claims . . . on any other ground
`(i.e., invalidity under §§ 101, 112).” Ex. 1038, 7 (emphasis added).
`Petitioner’s stipulation also unequivocally states, however, that it “will not
`pursue in this case the specific grounds . . . [in] the instituted inter parties
`[sic] review petition, or on any other ground . . . that was raised or could
`have been reasonably raised in an IPR (i.e., any ground that could be raised
`under §§ 102 or 103 on the basis of prior art patents or printed
`publications).” Id. at 6–7 (emphasis added).
`Petitioner’s stipulation here mitigates any concerns of duplicative
`efforts between the district court and the Board, as well as concerns of
`potentially conflicting decisions. See Sand Revolution 12. Importantly,
`
`18
`
`
`
`IPR2020-01054
`Patent 9,872,623 B2
`
`Petitioner broadly stipulates to not pursue “any ground raised or that could
`have been reasonably raised.” Reply 6. As noted in Sand Revolution, such a
`broad stipulation better addresses concerns of duplicative efforts and
`potentially conflicting decisions in a much more substantial way. Sand
`Revolution 12 n.5. Accordingly, Petitioner’s broad stipulation ensures that
`an inter partes review is a “true alternative” to the district court proceeding.
`Id.
`
`Thus, we find that this factor weighs strongly in favor of not
`exercising discretion to deny institution under 35 U.S.C. § 314(a).
`
`(5) Factor 5: whether the petitioner and the defendant in the
`parallel proceeding are the same party
`Petitioner and Patent Owner acknowledge the parties are the same in
`the inter partes proceeding and in the parallel proceeding. Prelim. Resp. 18–
`19; Reply 6–7. Thus, this factor supports denying institution. See Fintiv DI
`15; Sand Revolution 12–13; cf. Fintiv Order 13–14 (“If a petitioner is
`unrelated to a defendant in an earlier court proceeding, the Board has
`weighed this fact against exercising discretion.”).
`
`(6) Factor 6: other circumstances and considerations that
`impact the Board’s exercise of discretion, including the
`merits
`As discussed below, on this preliminary record, Petitioner has met its
`burden of demonstrating a reasonable likelihood that it would prevail in
`showing that claims of the ’623 patent are unpatentable.4 Although we
`
`
`4 The parties include arguments directed to the merits of the asserted
`grounds in their discussions of Factor 6. See Reply 7; Sur-reply 4–7. We do
`not rely on these arguments in our determination below that Petitioner has
`19
`
`
`
`IPR2020-01054
`Patent 9,872,623 B2
`
`recognize the record may change during trial, as discussed in detail below,
`Petitioner has made a sufficiently persuasive showing, on the record
`presently before us, that the prior art references cited in the Petition teach or
`suggest all limitations of the challenged claims. See Fintiv Order 14–15
`(discussing the merits of the Petition as a consideration).
`We determine that this factor does not weigh for or against denying
`institution in this case.
`
`(7) Conclusion—No Discretionary Denial
`We take “a holistic view of whether efficiency and integrity of the
`system are best served by denying or instituting review” when considering
`the six Fintiv factors. Fintiv Order 6. Our holistic review of the Fintiv
`factors, namely that the timing of the Petition was reasonable, the relatively
`limited investment in the parallel proceeding to date, and that there is
`minimal potential overlap of the two proceedings, indicates that the Fintiv
`factors weigh in favor of instituting inter partes review. As such, we are not
`persuaded that the interests of the efficiency and integrity of the system
`would be best served by invoking our authority under 35 U.S.C. § 314(a) to
`deny institution of a meritorious Petition. For the reasons discussed above,
`we decline to deny institution under § 314(a).
`
`B. Principles of Law
`
`1. Obviousness
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the subject matter sought to be patented and the prior art are such
`
`presented a reasonable likelihood of success on the merits (see infra Sections
`II.E–G).
`
`20
`
`
`
`IPR2020-01054
`Patent 9,872,623 B2
`
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness.5 See Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966). In that regard, an obviousness analysis “need not seek out precise
`teachings directed to the specific subject matter of the challenged claim, for
`a court can take account of the inferences and creative steps that a person of
`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; accord In re
`Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007).
`
`2. Level of Ordinary Skill in the Art
`Petitioner contends that a person of ordinary skill in the art “would
`have been a person with at least a B.S. degree in electrical or biomedical
`engineering or a related field with at least two years’ experience designing
`patient monitoring systems.” Pet. 16 (citing Ex. 1003 ¶¶ 27–32). Patent
`Owner does not dispute Petitioner’s contention on the current record, or
`propose its own assessment of the level of ordinary skill in the art.
`Based on the current record and for the purposes of this Decision, we
`adopt Petitioner’s proposed description of the person of ordinary skill in the
`art. We also note that the applied prior art reflects the appropriate level of
`
`
`5 At this stage of the proceeding, the parties have not directed our attention
`to any objective evidence of non-obviousness.
`21
`
`
`
`IPR2020-01054
`Patent 9,872,623 B2
`
`skill at the time of the claimed invention. See Okajima v. Bourdeau,
`261 F.3d 1350, 1355 (Fed. Cir. 2001).
`
`C. Claim Construction
`In an inter partes review for a petition filed on or after November 13,
`2018, a claim “shall be construed using the same claim construction standard
`that would be used to construe the claim in a civil action under 35 U.S.C.
`[§] 282(b).” 37 C.F.R. § 42.100(b) (2019).
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
