`Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 12
`Entered: December 7, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`SOTERA WIRELESS, INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`____________
`
`IPR2020-01078
`Patent RE47,218 E
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`____________
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`
`
`Before GEORGE R. HOSKINS, JENNIFER MEYER CHAGNON, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`HOSKINS, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
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`IPR2020-01078
`Patent RE47,218 E
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`INTRODUCTION
`I.
`Sotera Wireless, Inc. (“Petitioner”) has filed a Petition (Paper 1,
`“Pet.”) pursuant to 35 U.S.C. §§ 311–319 to institute an inter partes review
`of claims 1–10 and 12–18 of U.S. Patent No. RE47,218 E (“the
`’218 patent”).
`Masimo Corporation (“Patent Owner”) has filed a Preliminary
`Response (Paper 6, “Prelim. Resp.”) to the Petition.
`We authorized additional briefing to address Patent Owner’s argument
`that we should deny institution under 35 U.S.C. § 314(a) and Apple Inc. v.
`Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential)
`(“Fintiv Order”). See Paper 7. Accordingly, Petitioner filed a Reply
`(Paper 10, “Prelim. Reply”) to the Preliminary Response, and Patent Owner
`filed a Sur-reply (Paper 11, “Prelim. Sur-reply”) to the Reply.
`Institution of review requires Petitioner to demonstrate a reasonable
`likelihood of prevailing with respect to at least one challenged claim.
`35 U.S.C. § 314(a). Applying that standard on behalf of the Director
`(37 C.F.R. § 42.4(a)), we institute an inter partes review to determine
`whether Petitioner demonstrates by a preponderance of the evidence that
`claims 1–10 and 12–18 are unpatentable.
`
`BACKGROUND
`II.
`Real Parties-in-Interest and Related Proceedings
`A.
`Sotera Wireless, Inc. and Hon Hai Precision Industry Co., Ltd. are the
`real parties-in-interest for Petitioner, and Masimo Corporation is the real
`party-in-interest for Patent Owner. Pet. 1; Paper 5, 1. Also, Masimo Corp.
`v. Sotera Wireless, Inc. and Hon Hai Precision Industry Co. Ltd., Civil
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`Action No. 3:19-cv-01100-BAS-NLS (S.D. Cal.) (“the District Court
`Litigation”) is a related judicial matter. Pet. 2; Paper 5, 1.
`
`The ’218 Patent
`B.
`The ’218 patent concerns a system for monitoring a patient’s blood
`oxygen saturation (SpO2), and generating an alarm if the saturation falls too
`low. See Ex. 1001, Abstract, 1:34–39, 2:54–58. The system includes an
`optical sensor attached to the patient’s finger, to emit light into the fingertip
`tissue and detect light that is attenuated by blood flow within the fingertip, to
`provide a numerical readout of oxygen saturation. See id. at 1:39–55.
`Figure 1 of the ’218 patent is reproduced here:
`
`Figure 1 of the ’218 Patent.
`Figure 1 illustrates a previously known oxygen saturation measurement
`system having two “fixed-threshold alarm” schemes, at “delay” alarm
`threshold DL and at “no delay” alarm threshold NDL. Id. at 2:54–59
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`(emphasis added). If the patient’s measured oxygen saturation 110 falls and
`stays below delay threshold DL for a time period greater than time delay TD,
`as shown in Figure 1 from time t1 to time t2, then delayed alarm 140 is
`triggered. Id. at 2:59–3:1. If the patient’s measured oxygen saturation 110
`falls below no delay threshold NDL, as shown in Figure 1 at time t4, then
`immediate alarm 150 is triggered without delay. Id. at 2:61–62, 3:2–4.
`According to the ’218 patent, the fixed nature of delay alarm
`threshold DL undesirably leads to “a baseline drift problem,” which can
`generate a “nuisance” or “false” alarm. Id. at 2:54–56, 3:24–46 (describing
`Fig. 3). The ’218 patent therefore proposes “an adaptive alarm system,”
`which adjusts the delay alarm threshold downwards when an oxygen
`saturation baseline is established at lower values. Id. at 3:59–62. In this
`way, the inventive “alarm threshold . . . adapts to baseline drift in [oxygen
`saturation] and reduce[s] false alarms without a corresponding increase in
`missed true alarms.” Id. at 4:4–8.
`This is illustrated in Figure 6 of the ’218 patent, reproduced here:
`
`Figure 6 of the ’218 Patent.
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`Figure 6 graphs a measured physiological parameter such as oxygen
`saturation (the vertical axis) over time (the horizontal axis), as generated by
`an alarm system having a lower limit adaptive alarm threshold AT. Id.
`at 5:34–36, 7:40–47. An adaptive alarm threshold AT is applied whenever
`the measured oxygen saturation falls within range 650, extending from lower
`limit L2 up to maximum value Max, such as illustrated at segments 620, 630,
`and 640. Id. at 6:15–30, 7:9–67, Fig. 5B (horizontal axis values extend from
`L2 to Max). The adaptive thresholds AT are constrained to lie within
`range 660, extending from lower limit L2 up to limit L1. Id. at 6:15–30,
`7:9–67, Fig. 5A (adaptive threshold AT line 442 is constrained between
`limits L1 and L2 along vertical axis).
`In a preferred embodiment, lower limit L2 is equal to the no delay
`alarm threshold NDL of the prior art system shown in Figure 1, and limit L1
`is equal to the delay alarm threshold DL of the prior art system. Id. at
`5:66–6:4, 6:20–34. However, the fixed threshold the prior art implements at
`limit L1 is replaced by adaptive thresholds AT. Id. at 6:22–34. Each
`individual threshold AT, during a given time period such as t1, t2, or t3, may
`advantageously be implemented as a time delay alarm, as the prior art
`system does with its fixed delay alarm threshold DL. Id. at 6:38–43.
`The system determines a baseline B of the patient’s oxygen saturation
`during different time periods such as t1, t2, and t3. Id. at 6:11–15, 6:44–7:8.
`For each different baseline B, the system applies a different adaptive alarm
`threshold AT. Id. at 6:15–19, Fig. 6. Specifically, the system calculates
`delta Δ as a function of the varying baseline B and the pre-set limits L1 and
`L2 and maximum value Max. Id. at 6:15–34 (describing Fig. 4A), 7:9–39
`(describing Fig. 5B). Then, the adaptive alarm threshold is set at
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`AT = B – Δ. Id. at 7:27–39 (describing Fig. 5A), 7:53–8:6 (describing
`Fig. 6).
`
`The Claims of the ’218 Patent
`C.
`The ’218 patent lists seventeen claims, numbered 1–10 and 12–18.
`Ex. 1001, 1:4–9, 13:62–16:62. As a reissue patent, the claim listing in the
`’218 patent uses brackets to identify verbiage removed during the reissue
`process, and uses italics to identify verbiage added during the reissue
`process. Id. Due to the extent and nature of these reissue amendments, it is
`difficult to ascertain the scope of the claimed invention by simply reviewing
`the claim listing in the ’218 patent, particularly in the three independent
`claims 1, 8, and 12. Id. at 13:62–16:62.
`Accordingly, we reproduce claim 1 here, removing the bracketed
`verbiage and not italicizing the added verbiage, to ease readability. We also
`include Petitioner’s labeling scheme 1(a)–1(i). See Pet. vii–viii.1
`[1(a)] 1. A system for reducing electronic alarms in a
`medical patient monitoring system, the system comprising:
`[1(b)] an optical sensor configured to transmit optical
`radiation into a tissue site of a patient and detect attenuated
`optical radiation indicative of at least one physiological
`parameter of a patient; and
`
`
`1 In other IPR proceedings, challenging other patents asserted by Patent
`Owner in the District Court Litigation, Patent Owner has argued Petitioner
`uses abbreviation and spacing tricks to satisfy the Board’s word count limits.
`These alleged tricks include citing to “EX1XXX” instead of “Ex. 1xxx,” and
`omitting the full claim language, both of which Petitioner does here too. In
`the interest of fairness, Patent Owner may use these conventions in
`preparing its Patent Owner Response. The parties also may use these
`conventions for any other briefing in this proceeding (e.g., Reply, Sur-reply,
`Motions to Exclude).
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`[1(c)] one or more hardware processors in electronic
`communication with the optical sensor, the one or more
`hardware processors configured to:
`[1(d)] determine oxygen saturation values of the
`patient over a first period of time;
`[1(e)] when at least one oxygen saturation value
`obtained over the first period of time exceeds a first
`alarm threshold, determine whether a first alarm should
`be triggered;
`[1(f)] access a second alarm threshold to be
`applied during a second period of time subsequent to the
`first period of time, the second alarm threshold replacing
`the first alarm threshold,
`[1(g)] wherein the second alarm threshold has a
`value less than the at least one oxygen saturation value
`and greater than a lower limit and at an offset from the at
`least one oxygen saturation value, wherein the offset is
`diminished as a difference between the at least first
`oxygen saturation value and the lower limit diminishes;
`[1(h)] determine oxygen saturation values of the
`patient over the second period of time; and
`[1(i)] trigger a second alarm based on at least one
`value of the oxygen saturation values obtained over the
`second period of time exceeding the second alarm
`threshold.
`Ex. 1001, 13:62–14:40. Claim 12 recites a method comprising steps that are
`analogous to various system limitations of claim 1. See id. at 15:52–16:32.
`Claim 8 is a system claim somewhat akin to claim 1. See id. at
`15:1–39. Claim 8 differs from claim 1 most significantly in reciting that the
`processor is configured to “apply a time delay based on the second alarm
`threshold, wherein the time delay approaches zero as the at least one oxygen
`saturation value obtained over the first period of time approaches the lower
`limit.” Id. at 15:19–23.
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`Prior Art and Asserted Grounds
`D.
`Petitioner asserts claims 1–10 and 12–18 are unpatentable, based on
`the following two grounds. See Pet. 5–6.
`
`Claims Challenged 35 U.S.C. § References
`1–4, 7, 12–15
`103
`Bock2, Kiani3
`5, 6, 8–10, 16–18
`103
`Bock, Woehrle4, Kiani
`
`III. ANALYSIS
`A. Discretion to Deny Under 35 U.S.C. § 314(a)
`Patent Owner, relying on the Board’s precedential decisions in NHK5
`and the Fintiv Order, contends we should exercise our discretion under
`35 U.S.C. § 314(a) to deny institution based on the status of the District
`Court Litigation. See Prelim Resp. 13–19.
`
`Legal Standards
`1.
`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.”
`
`
`2 Ex. 1005, U.S. Patent No. 7,079,035 B2, issued July 18, 2006.
`3 Ex. 1006, U.S. Patent No. 6,597,933 B2, issued July 22, 2003.
`4 Ex. 1007, WO 2009/093159 A1, published July 30, 2009.
`5 NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8
`(PTAB Sept. 12, 2018) (precedential).
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`(emphasis omitted)); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367
`(Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute
`an IPR proceeding.”).
`In determining whether to exercise discretion to deny institution under
`35 U.S.C. § 314(a), the Board considers an early trial date in related
`litigation as part of an assessment of all relevant circumstances of the case,
`including the merits, in an effort to balance considerations such as system
`efficiency, fairness, and patent quality. Fintiv Order 5–6; see also NHK,
`Paper 8 at 19–20 (denying institution relying, in part, on § 314(a) because
`the parallel district court proceeding was scheduled to finish before the
`Board reached a final decision).
`When considering an early trial date in related litigation, the Board
`evaluates the following factors (“Fintiv factors”):
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`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.
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`Factual Background
`2.
`The progress of the 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. 1008) against
`Petitioner in the U.S. District Court for the Southern District of California.
`Petitioner has filed a Motion to Stay the District Court Litigation (Ex. 1036)
`and Patent Owner opposed (Ex. 2001). According to the parties, the District
`Court has not yet ruled on the Motion. See Prelim. Resp. 14–15; Prelim.
`Reply 2–3. The District Court has vacated all Markman deadlines, including
`the previously scheduled November 3, 2020, Markman hearing, pending its
`decision on Petitioner’s Motion to Stay. See Ex. 1037.
`Patent Owner served its infringement contentions on January 24,
`2020. Ex. 1016; see Prelim. Resp. 17. Petitioner served its invalidity
`contentions on March 20, 2020, which were amended on September 8, 2020.
`Exs. 2004 & 2007; see Prelim. Resp. 17.
`On June 11, 2020, Petitioner filed the Petition in this proceeding. See
`Paper 4 (according the Petition a filing date of June 11, 2020).
`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 Litigation] 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
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`could be raised under §§ 102 or 103 on the basis of prior art patent or printed
`publications).” Id. at 6–7.
`
`Analysis of the Fintiv Factors
`3.
`With this background, we consider each of the factors set forth in the
`Fintiv Order. We then weigh the factors and take a holistic view of whether
`efficiency and integrity of the patent system are best served by denying or
`instituting review.
`
`Factor 1:
`whether a stay exists or is likely to be granted if a proceeding is instituted
`Petitioner has filed a Motion to Stay, but the District Court has not yet
`ruled on the motion. Prelim. Resp. 14–15; Prelim. Reply 2–3. Patent Owner
`contends a “stay is unlikely.” Prelim. Resp. 14–15. In particular, Patent
`Owner contends the Southern District of California has “found that direct
`competition between the parties [in the relevant market] evidences
`significant prejudice weighing against a stay.” Id. at 14 (citation omitted).
`Petitioner notes, however, that in the order vacating all Markman deadlines,
`the “[District] Court noted that any rescheduled Markman date may not be
`necessary, depending on how the [District] Court rules on the motion to
`stay.” Prelim. Reply 3 (citing Ex. 1037).
`Because the District Court has not ruled on the pending motion to
`stay, we determine 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,
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`IPR2019-01393, Paper 24 at 7 (PTAB June 16, 2020) (informative) (“Sand
`Revolution”).
`
`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 this trial
`date “means there is little opportunity for efficiency or simplification with
`IPR proceedings because the final written decision date . . . will still come
`on or after trial.” Prelim. Sur-reply 3. Petitioner contends, on the other
`hand, that because the final written decision will issue close to the scheduled
`trial date, and all Markman deadlines have been indefinitely vacated, this
`factor strongly weighs in favor of instituting inter partes review. Prelim.
`Reply 3–4. Petitioner also notes 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.
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`Factor 3:
`investment in the parallel proceeding by the court and parties
`Patent Owner contends “the parties and [District] Court have already
`invested substantial resources litigating . . . patent validity.” Prelim.
`Resp. 16–17. As noted above, the parties have already served their
`respective infringement contentions and invalidity contentions. However, as
`Petitioner points out, all Markman deadlines have been vacated, including
`the Markman hearing. Prelim. Reply 3–4. Moreover, much other work
`remains in the District Court Litigation as it relates to invalidity: fact
`discovery is ongoing, expert reports are not yet due, and substantive motion
`practice is yet to come. Id. Thus, although the parties and the District Court
`have invested some effort in the parallel proceeding to date, further effort
`remains to be expended in this case before trial. The facts here are similar to
`those in both recent Board informative decisions. See Sand Revolution 11;
`Fintiv DI 14; see also Fintiv Order 10 (“If, at the time of the institution
`decision, the district court has not issued orders related to the patent at issue
`in the petition, this fact weighs against exercising discretion to deny
`institution under NHK.”).
`The Fintiv Order also recognizes that “notwithstanding that a
`defendant has one year to file a petition, it may impose unfair costs to a
`patent owner if the petitioner, faced with the prospect of a looming trial date,
`waits until the district court trial has progressed significantly before filing a
`petition at the Office.” Fintiv Order 11. The Order instructs the parties to
`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 asserts Petitioner “waited until the very end of the one-year period”
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`to file its Petition, and argues the Petition “presents arguments that overlap”
`with Petitioner’s March 20, 2020, invalidity contentions in the District
`Court. Prelim. Resp. 16. Petitioner, on the other hand, contends it “was not
`dilatory in filing this petition.” Prelim. Reply 5. Petitioner explains that the
`parties spent six months after the complaint was filed “engaged in settlement
`discussions.” Id. Further, Petitioner notes that its initial invalidity
`contentions were filed on March 20, 2020, which was “concurrent with the
`nationwide shift to ‘work from home’ and the closing of counsels’ public
`offices.” Id. Petitioner contends that, thereafter, it “diligently worked to
`draft IPR petitions challenging nine patents and 183 claims,” including the
`present Petition. Id. Patent Owner responds that “[n]ormal settlement
`discussions . . . cannot excuse” the delay, and reiterates its contention that
`Petitioner waited “until just before the statutory deadline” to file its Petition.
`Prelim. Sur-reply 3.
`Petitioner filed the present Petition on June 11, 2020, almost three
`months after serving its initial invalidity contentions on March 20, 2020, and
`two days before the statutory deadline of June 13, 2020. Based on the facts
`present here, we find 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 Prelim. Reply 5.
`Due to the relatively limited investment in the District Court
`Litigation to date and the fact that the timing of the Petition was reasonable,
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`we find this factor weighs in favor of not exercising discretion to deny
`institution under 35 U.S.C. § 314(a).
`
`Factor 4:
`overlap between issues raised in the petition and in the parallel proceeding
`Patent Owner contends “Petitioner relies on the same combination of
`references, namely, Bock and Kiani, to allege invalidity of Claims 1–4, 7,
`and 12–15 in the District Court [Litigation]” and the present Petition.
`Prelim. Resp. 17; Exs. 2004 & 2007 (Invalidity Contentions).
`Petitioner notes the Petition “seeks review of all claims of the
`[’218 patent], not merely those at issue in the [District Court Litigation].”
`Prelim. Reply 6; see also Ex. 2004, 1 (claims 1, 2, 3, 4, 7, 12, 13, 14, 15,
`and 18 of the ’218 patent are asserted in the District Court Litigation).
`Specifically, while Patent Owner is correct that the first ground of the
`Petition has also been presented for consideration by the District Court, the
`second ground of the Petition which attacks claims 5, 6, 8–10, and 16–18 of
`the ’218 patent as having been obvious over Bock, Woehrle, and Kiani, has
`not been asserted in the District Court. See, e.g., Ex. 2004, 17; Ex. 2007, 17.
`Further, as noted above, Petitioner has filed in the District Court
`“a stipulation that, if IPR is instituted, [Petitioner] will not pursue in the
`District Court Litigation any ground raised or that could have been
`reasonably raised in an IPR.” Prelim. Reply 6; Ex. 1038. Petitioner
`contends that, because of this stipulation, “there will be no overlap of
`invalidity issues between the [District Court Litigation] and [this inter partes
`review].” Prelim. Reply 6 (emphasis added).
`Patent Owner contends the stipulation is “unclear” as to whether
`Petitioner reserves the right to proceed based on other references cited in the
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`invalidity contentions in District Court. Prelim. Sur-reply 4. We disagree
`with Patent Owner’s contention here. The portion of the stipulation quoted
`by Patent Owner, states 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,
`Petitioner broadly stipulates not to pursue “any ground raised or that could
`have been reasonably raised.” Prelim. Reply 6 (emphasis added). 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 than a stipulation limited to “the ‘same grounds’ presented”
`in both proceedings. Sand Revolution 12 n.5. Accordingly, Petitioner’s
`broad stipulation ensures an inter partes review is “a true alternative to
`litigation.” Id.
`Thus, we find this factor weighs strongly in favor of not exercising
`discretion to deny institution under 35 U.S.C. § 314(a).
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`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
`this inter partes review proceeding and in the District Court Litigation.
`Prelim. Resp. 18; Prelim. 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.”).
`
`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 ’218 patent are unpatentable.6 Although we
`recognize the record may change during trial, as discussed in detail below,
`Petitioner has made a sufficiently persuasive showing, on the record
`presently before us, that the prior art references cited in the Petition teach or
`suggest all limitations of the challenged claims. See Fintiv Order 14–15
`(discussing the merits of the Petition as a consideration).
`We determine this factor does not weigh for or against denying
`institution in this case.
`
`
`6 The parties include arguments directed to the merits of the asserted
`grounds in their discussions of Factor 6. See Prelim. Reply 7; Prelim.
`Sur-reply 5–7. We do not rely on these arguments in our determination
`below that Petitioner has presented a reasonable likelihood of success on the
`merits (see infra Sections III.B–F).
`
`17
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`
`Conclusion
`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 District Court Litigation to date, and that there is
`minimal potential overlap of the two proceedings, indicates the Fintiv factors
`weigh in favor of instituting inter partes review. As such, we are not
`persuaded the interests of 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).
`
`Claim Construction
`B.
`We interpret the ’218 patent claims “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). This
`“includ[es] 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.” Id.
`Neither Petitioner nor Patent Owner proposes any express claim
`construction at this stage of the proceeding. See Pet. 10; Prelim. Resp. 12.
`However, after review of the assertions in the Petition and the Preliminary
`Response comparing claim 1 with Bock, we conclude two constructions of
`claim 1 are required, as follows.
`
`18
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`
`“at least one oxygen saturation value,”
`1.
`“the at least one oxygen saturation value,” and
`“the at least first oxygen saturation value”
`Claim 1 recites, in limitation 1(e), “at least one oxygen saturation
`value obtained over the first period of time,” wherein the value “exceeds a
`first alarm threshold.” Ex. 1001, 14:6–8 (italicized emphasis added).
`Limitation 1(g) adds “the second alarm threshold has a value less than the at
`least one oxygen saturation value and greater than a lower limit and at an
`offset from the at least one oxygen saturation value, wherein the offset is
`diminished as a difference between the at least first oxygen saturation value
`and the lower limit diminishes.” Id. at 14:16–30 (italicized and underlined
`emphases added).
`Applying routine claim construction principles, the references in
`limitation 1(g) to “the” at least one oxygen saturation value would normally
`be construed to refer back to the same at least one oxygen saturation value
`previously recited in limitation 1(e). See, e.g., Microprocessor
`Enhancement Corp. v. Texas Instruments Inc., 520 F.3d 1367, 1375
`(Fed. Cir. 2008) (agreeing with District Court’s “initial assumption” “that
`where a subsequent use of a claim term makes reference to the first use as an
`antecedent by using ‘said’ or ‘the,’” the term “should be construed
`consistently with its appearance in other places in the same claim”); Process
`Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1356–57 (Fed. Cir.
`1999) (“It is clear from the language of the claim itself that the term ‘a
`discharge rate’ in clause [b] is referring to the same rate as the term ‘the
`discharge rate’ in clause [d].”).
`At the same time, “the patentee’s mere use of a term with an
`antecedent does not require that both terms have the same meaning.”
`
`19
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`Microprocessor, 520 F.3d at 1375. For example, the claims at issue in the
`Microprocessor decision recited “at least one condition code,” and then
`referred back to “said condition code” or “the condition code” five times.
`Id. at 1370–72, 1375. The District Court had held the claims were
`“insolubly ambiguous for requiring that [‘condition code’] be interpreted
`differently in different portions of a single claim.” Id. at 1374, 1375. In
`particular, the District Court had concluded “the term ‘condition code’ must
`mean either a storage unit or a value derived from the output of the storage
`unit depending on the context in which its used, yet [the] claims are facially
`nonsensical if either of these definitions is used exclusively.” Id. at 1375
`(emphases added). The Federal Circuit agreed with the District Court’s
`reading of the claims, but nonetheless reversed the holding of indefiniteness,
`because “the appropriate meaning of ‘condition code’ is readily apparent
`from each occurrence in context.” Id. at 1375–76 (emphasis added). We
`conclude, on the present preliminary record, that claim 1 should be
`construed in the same fashion as the claims in the Microprocessor decision.
`In limitation 1(e), the “at least one oxygen saturation value” refers to
`one value of the patient data generated by the sensor during the first period
`of time. Such patient data is shown, for example, in Figure 6 of the
`’218 patent at parameter segments 620 and 630, during respective time
`periods t1 and t2, where each segment includes a transient desaturation
`event 624 or 634 below a baseline B. Ex.
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