`Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 35
`Date: November 29, 2021
`
`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
`
`____________
`
`
`
`Before GEORGE R. HOSKINS, JENNIFER MEYER CHAGNON, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`HOSKINS, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`
`INTRODUCTION
`I.
`Sotera Wireless, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`pursuant to 35 U.S.C. §§ 311–319 to institute an inter partes review of all
`claims 1–10 and 12–18 of U.S. Patent No. RE47,218 E (Ex. 1001,
`“the ’218 patent”). Masimo Corporation (“Patent Owner”) opposes the
`Petition. We instituted the petitioned review (Paper 12, “Institution
`Decision” or “Inst. Dec.”).
`Patent Owner filed a Patent Owner Response (Paper 23, “PO Resp.”)
`to the Petition. Petitioner filed a Reply (Paper 25, “Pet. Reply”) to the
`Patent Owner Response. Patent Owner filed a Sur-reply (Paper 27,
`“Sur-reply”) to the Reply. An oral hearing was held, for which the transcript
`was entered into the record (Paper 34, “Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(b)(4) and § 318(a). This
`Decision is a final written decision under 35 U.S.C. § 318(a) and 37 C.F.R.
`§ 42.73 as to the patentability of claims 1–10 and 12–18 of the ’218 patent.
`We determine Petitioner has shown 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. Masimo Corp. v.
`Sotera Wireless, Inc. and Hon Hai Precision Industry Co. Ltd., Civil Action
`No. 3:19-cv-01100-BAS-NLS (S.D. Cal.) is a related judicial proceeding.
`Pet. 2; Paper 5, 1.
`
`2
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`
`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, code (57), 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 illustrates a prior art oxygen saturation measurement system having
`two “lower-limit, fixed-threshold alarm” schemes, at “delay” alarm
`threshold DL and at “no delay” alarm threshold NDL. Id. at 2:54–59
`(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,
`
`3
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`as shown in Figure 1 from time t1 to time t2, then delayed alarm 140 is
`triggered. Id. at 2:59–3:2. If the patient’s measured oxygen saturation 110
`falls below no delay threshold NDL, as shown in Figure 1 at time t4, then
`alarm 150 is triggered immediately, 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 (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:
`
`4
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`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 L2 and L1 along vertical axis).
`In a preferred embodiment, lower limit L2 corresponds to the value of
`the no delay alarm threshold NDL of the prior art system shown in Figure 1,
`and limit L1 corresponds to the value of the delay alarm threshold DL of the
`prior art system. Id. at 5:66–6:4, 6:20–34. The fixed alarm threshold that
`the prior art implements at limit L1 is replaced by adaptive alarm
`thresholds AT. Id. at 6:22–34. Each 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 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. Specifically, the system calculates delta Δ as
`a function of: the varying baseline B; pre-set limits L1 and L2; and maximum
`
`5
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`value Max. Id. at 6:15–34 (Fig. 4A), 7:9–39 (Fig. 5B). The adaptive alarm
`threshold is set AT = B – Δ. Id. at 7:27–39 (Fig. 5A), 7:53–8:6 (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(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(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;
`
`6
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`
`[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
`analogous to limitations 1(d)–1(i). 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.
`
`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.
`
`7
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`
`Claims Challenged 35 U.S.C. § References
`1–4, 7, 12–15
`103
`Bock1, Kiani2
`
`5, 6, 8–10, 16–18
`
`103
`
`Bock, Woehrle3, Kiani
`
`Testimonial Evidence
`E.
`Petitioner relies on the testimony of George E. Yanulis, D. Eng.
`(Exhibit 1003) and Bryan Bergeron, M.D. (Exhibit 1040). Patent Owner
`relies on the testimony of Jack Goldberg (Exhibit 2011).
`
`III. ANALYSIS
`Statement of Law
`A.
`Petitioner bears the burden of proving unpatentability of the
`challenged claims, and the burden of persuasion never shifts to Patent
`Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
`1378 (Fed. Cir. 2015). To prevail, Petitioner must prove unpatentability by
`a preponderance of the evidence. See 35 U.S.C. § 316(e); 37 C.F.R.
`§ 42.1(d).
`A patent claim is unpatentable under 35 U.S.C. § 103 if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`
`1 Ex. 1005, U.S. Patent No. 7,079,035 B2, issued July 18, 2006.
`2 Ex. 1006, U.S. Patent No. 6,597,933 B2, issued July 22, 2003.
`3 Ex. 1007, WO 2009/093159 A1, published July 30, 2009.
`
`8
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`(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, if made available in the record (which has not occurred
`here). See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`Level of Ordinary Skill in the Art, and
`B.
`Patent Owner’s Related Challenge to Dr. Yanulis’s Testimony
`Level of Ordinary Skill in the Art
`1.
`Petitioner contends a person having ordinary skill in the art pertaining
`to the ’218 patent (“POSITA”) “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. 9–10 (citing Ex. 1003 ¶¶ 33–40). Also: “Less work experience may be
`compensated by a higher level of education, such as a master’s degree, and
`vice versa.” Id.
`Patent Owner “does not dispute Petitioner’s characterization of the
`level of ordinary skill in the art,” which Patent Owner describes as
`“[r]elatively [l]ow.” PO Resp. 12; Ex. 2011 ¶¶ 18–19.
`We conclude the parties’ agreed-upon level of ordinary skill is
`consistent with the ’218 patent and the asserted prior art. We, therefore,
`apply it here.
`
`Patent Owner’s Related Challenge to Dr. Yanulis’s Testimony
`2.
`Patent Owner urges us to reject Dr. Yanulis’s testimony on behalf of
`Petitioner concerning what a POSITA would have understood the prior art to
`
`9
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`disclose, and what a POSITA would have been motivated to do. See PO
`Resp. 12–14. Patent Owner asserts Dr. Yanulis “admitted during his
`deposition that he applied the wrong legal standard” because he “based his
`opinions on how he personally interpreted the references, rather than what a
`[POSITA] would have understood.” Id. at 12–13 (citing Ex. 2014,
`55:11–18, 57:2–6, 136:8–9). Patent Owner explains: “This is problematic
`because Petitioner asserts that Dr. Yanulis is an expert whose understanding
`exceeds that of the ordinarily skilled artisan,” so his testimony as to
`obviousness is based on “extraordinary skill and experience in the art” and
`is therefore “irrelevant.” Id. at 13–14 (emphasis by Patent Owner) (citing
`35 U.S.C. § 103; KSR, 550 U.S. at 420 (“The question is . . . whether the
`combination was obvious to a person with ordinary skill in the art.”)).
`Petitioner replies that Dr. Yanulis applied the correct legal standard,
`because “he viewed the prior art and the [’218] patent from the perspective
`of a [POSITA].” Pet. Reply 1–2 (citing Ex. 1003 ¶ 33). Petitioner asserts it
`is not unusual for an expert witness such as Dr. Yanulis to have “credentials
`additional to those of a [POSITA].” Id. (citing Ex. 1003 ¶¶ 4–12).
`Petitioner does not discuss Dr. Yanulis’s deposition testimony.
`Dr. Yanulis’s declaration states he has “knowledge relevant to what a
`person having ordinary skill in the art at the time of the invention would
`understand and do,” with the time of invention being “the priority date of the
`[’218] patent” in 2010. Ex. 1003 ¶ 33. His declaration also states that in
`2010 Dr. Yanulis “had 27 years of experience in this field and was a person
`having ordinary skill in the art.” Id. Further, Dr. Yanulis concludes he is
`“able to read and understand the claims and specifications of the prior art
`and the [’218] patent in the light that a [POSITA] would read and understand
`
`10
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`them,” and sets forth the POSITA level we have adopted above. Id.
`¶¶ 33–34. Thus, we agree with Petitioner that Dr. Yanulis’s declaration
`indicates he applied the correct legal standard for obviousness, by testifying
`as to what a POSITA would have known and done in 2010, rather than what
`Dr. Yanulis personally would have known and done in 2010.
`In the deposition testimony cited by Patent Owner, Dr. Yanulis was
`asked “I think you mentioned in your declaration or elsewhere you have had
`several decades of experience in this field. Is that right?” Ex. 2014,
`55:11–16 (emphasis added). He responded: “I think that would be safe to
`say. Probably more close to 40 years, counselor.” Id. at 55:17–18.
`This testimony merely reflects Dr. Yanulis’s personal experience as
`relevant to the ’218 patent, which qualifies him to testify concerning what a
`POSITA would have known and done in 2010. Dr. Yanulis did not state that
`his patentability opinions are premised on what he personally would have
`known and done in 2010, rather than what a POSITA would have known
`and done in 2010. See id. at 55:11–18.
`Dr. Yanulis was later asked: “Would a person of ordinary skill in the
`art have several decades of experience as of the priority date of
`[the ’218] patent?” Id. at 56:12–14 (emphasis added). He answered: “Not
`necessarily,” and further alluded to the POSITA description in his
`declaration, which he recalled as being “at least a BS in biomedical
`engineering or electrical engineering, and preferably a Master’s in either; as
`well as at least two years of design experience and working with these
`devices.” Id. at 56:15–57:1. He then added: “I wouldn’t expect a normal
`[POSITA] to have that many years to completely understand what’s
`disclosed, not only in the Bock patent, but in the prior art[.]” Id. at 57:2–6.
`
`11
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`
`We disagree with Patent Owner’s characterization of this testimony as
`establishing that Dr. Yanulis’s patentability opinions are premised on what
`he personally would have known and done in 2010. Instead, Dr. Yanulis
`acknowledged that he personally had decades of experience in the pertinent
`field, and then testified that such extensive experience (which is not required
`for a POSITA) is not needed to understand Bock and the other prior art at
`issue in this proceeding. See id. at 56:12–57:6. Thus, as with Dr. Yanulis’s
`declaration, his deposition testimony was that he applied the correct legal
`standard for obviousness, by testifying as to what a POSITA would have
`known and done in 2010. This is confirmed by his later deposition
`testimony: “I was referring to what I would expect a [POSITA] should know
`reviewing this challenge[d] patent and the prior art,” and “I was just
`reviewing based on my definition of a [POSITA]” even though “I think it’s
`very fair to say I have more expertise than the typical [POSITA].” Id.
`at 136:2–9 (emphases added).
`Thus, after reviewing the entirety of Dr. Yanulis’s testimony cited by
`the parties in this proceeding, we determine he applied the correct legal
`standard for obviousness, by opining as to what a POSITA would have
`known and done in 2010.
`
`Claim Construction
`C.
`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). This “includ[es]
`construing the claim in accordance with the ordinary and customary
`
`12
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`meaning of such claim as understood by one of ordinary skill in the art and
`the prosecution history pertaining to the patent.” Id.
`We construe two aspects of claim 1, and then briefly address similar
`limitations in claims 8 and 12.
`
`Claim 1:
`1.
`“at least one oxygen saturation value,”
`“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).
`In the Institution Decision, we preliminarily construed these
`limitations sua sponte. See Inst. Dec. 18–23. We also “encourage[d] both
`parties to state in their post-institution briefs whether they agree with [our]
`preliminary claim construction, and to discuss the reason(s) and support for
`any disagreement.” Id. at 23. Patent Owner accepted this invitation. See
`PO Resp. 29–30. Petitioner declined the invitation, until we sought
`clarification during the oral hearing. See Pet. Reply 10; Tr. 11:13–14:18.
`We now revisit our preliminary construction of these limitations, based on a
`full record.
`
`13
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`
`First, focusing on limitation 1(g), we preliminarily concluded “the two
`recitations of ‘the at least one oxygen saturation value,’ and the sole
`recitation of ‘the at least first oxygen saturation value,’ all refer to the same
`value as each other.” Inst. Dec. 21. Patent Owner agrees with this
`preliminary construction. See PO Resp. 30. Petitioner has not taken a
`position as to this preliminary construction. See, e.g., Pet. Reply 10. We,
`therefore, discern no reason to deviate from this preliminary construction,
`and we continue to maintain it here. See Inst. Dec. 21 (lines 4–18).
`Second, considering the inter-relationship between limitations 1(e)
`and 1(g), we preliminarily concluded that “the ‘one’ value in limitation 1(e)
`[refers] to patient data generated by a sensor (such as parameter
`segments 620, 630, and 640 in Figure 6 of the ’218 patent),” whereas “the
`‘one’ or ‘first’ value in limitation 1(g) [refers] to a value derived from the
`patient data (such as baselines B in Figure 6).” Inst. Dec. 23 (emphases
`added); see also id. at 19–23 (analysis in support of preliminary
`construction). Patent Owner disagrees, and contends the oxygen saturation
`values recited in limitation 1(g) each “refer back to” the “same” oxygen
`saturation value in limitation 1(e). PO Resp. 30 (emphasis added). This
`value is patient data generated by a sensor, “not . . . a value derived from the
`measured parameter values.” Id.
`During the oral hearing, Petitioner’s counsel agreed with Patent
`Owner’s construction of the inter-relationship between limitations 1(e)
`and 1(g). See Tr. 8:15–9:5, 11:13–14:18. Petitioner’s counsel stated:
`“I believe that our consistent position is that the value that’s being measured
`from the patient at any given moment, that that is the oxygen saturation
`value that we’re looking at” in both limitations. Id. at 12:23–13:1
`
`14
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`(emphases added). Thus, Petitioner’s position is that all of the oxygen
`saturation values recited in limitations 1(e) and 1(g) refer to “measured
`patient value[s],” not to other values derived from measured patient values.
`Id. at 13:6–14:18. Patent Owner’s counsel confirmed Petitioner’s
`description of claim 1 during the oral hearing is the same as Patent Owner’s
`construction of claim 1. See id. at 31:20–32:17 (stating Patent Owner
`“argue[s] . . . that all of the references to the value or the first value is
`referring to the same thing, and so to the extent that that’s now what
`[Petitioner] is arguing, then I guess we would agree with that”).
`Upon review of the foregoing, and based on the agreement of the
`parties in this regard, we construe all of the oxygen saturation values recited
`in limitations 1(e) and 1(g) to refer to the same value. That is, they each
`refer to patient data generated by a sensor, such as parameter segments 620,
`630, and 640 in Figure 6 of the ’218 patent. The at least one value recited in
`limitation 1(e) is obtained over a first period of time such as segment 620
`over time t1. The at least one value recited in limitation 1(g) is obtained over
`a second period of time, following the first period of time, such as
`segment 630 over time t2. We do not construe the oxygen saturation values
`recited in limitation 1(g) to refer to a value derived from the patient data,
`such as baselines B.
`
`Claim 1:
`2.
`“one or more hardware processors configured to . . . trigger a second alarm
`based on [a measured oxygen saturation value] exceeding the second alarm
`threshold”
`Limitation 1(i) recites a processor “configured to . . . trigger a second
`alarm based on at least one value of the oxygen saturation values obtained
`
`15
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`over the second period of time exceeding the second alarm threshold.”
`Ex. 1001, 14:1–3, 14:34–40 (emphases added).
`
`a)
`
`The Institution Decision’s Preliminary Construction of Limitation 1(i)
`In the Institution Decision, we preliminarily construed limitation 1(i)
`sua sponte. See Inst. Dec. 18, 23–24. “[W]e conclude[d] that an oxygen
`saturation value exceeding the second alarm threshold must be one condition
`that is satisfied for the alarm to be ‘triggered . . . based on’ this condition in
`limitation 1(i).” Id. at 24. We further concluded “claim 1 is open to
`requiring additional conditions to be satisfied for the alarm to be triggered,”
`with the ’218 patent disclosing a time delay condition as one example. Id.
`at 23–24 (citing Ex. 1001, 2:54–3:1 (Fig. 1), 6:35–41 (Fig. 4A), 7:40–8:6
`(Fig. 6), 14:58–62 (claim 5)).
`This construction of limitation 1(i) was a significant factor in our
`determination, at the institution stage, that Petitioner had sufficiently
`established Bock discloses limitation 1(i) to justify institution of review,
`over objections made in Patent Owner’s Preliminary Response. See id.
`at 39–41.
`
`b)
`
`Patent Owner’s Post-Institution Construction of Limitation 1(i)
`Patent Owner argues the Institution Decision construed limitation 1(i)
`too broadly, and pursuant to a correct and narrower claim construction, Bock
`does not disclose limitation 1(i). See PO Resp. 2–3, 15–28.
`Patent Owner asserts limitation 1(i) “requires that exceeding the
`oxygen saturation value identified as the second alarm threshold triggers the
`alarm (optionally in combination with other non-oxygen saturation value
`conditions).” Id. at 15; Ex. 2011 ¶¶ 47–48. A time delay is one example of
`
`16
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`the other non-oxygen saturation value conditions permitted by this
`construction. See PO Resp. 16, 26; Sur-reply 2; Ex. 2011 ¶ 48. The critical
`difference between Patent Owner’s construction and the Institution
`Decision’s preliminary construction is that, per Patent Owner, the other
`conditions cannot be further oxygen saturation threshold values. See PO
`Resp. 15, 18 (arguing limitation 1(i) “should not be construed to encompass
`a system that triggers an alarm only if the patient’s oxygen saturation
`exceeds a value that is more extreme than the purported ‘second alarm
`threshold’” (emphasis added)); Ex. 2011 ¶¶ 47–53. Patent Owner’s
`construction would differentiate claim 1 from Bock, because as discussed in
`Section III.D.1 below, Bocks triggers an alarm only if the patient’s oxygen
`saturation firstly exceeds tracking threshold 314—which Petitioner equates
`to the second alarm threshold of limitation 1(i)—and then secondly exceeds
`alarm limit 316. See PO Resp. 16–17, 20–21; Ex. 2011 ¶¶ 29–30, 36–37.
`Concerning the claim language, Patent Owner argues the Institution
`Decision “construed the phrase ‘triggered . . . based on . . . exceeding’ but
`did not construe the phrase ‘second alarm threshold.’” PO Resp. 16, 18.
`Patent Owner construes “second alarm threshold” to mean “the most
`extreme (lowest) oxygen saturation value that must be exceeded to trigger
`the second alarm.” Id. at 22; Sur-reply 3–4; Ex. 2011 ¶¶ 47–53. Patent
`Owner’s view of the claim language is that “[i]f a purported condition
`requires the oxygen saturation value exceed a value more extreme than the
`alleged ‘second alarm threshold,’ it would not be adding a condition—it
`would be eliminating and replacing it,” and further “[i]f exceeding an
`oxygen saturation value cannot trigger an alarm, then that oxygen saturation
`value cannot be the claimed ‘second alarm threshold.’” PO Resp. 17 (citing
`
`17
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`Ex. 2011 ¶¶ 47–48, 54–58, 63); id. at 18–19, 22–23; Sur-reply 2–3, 5 (citing
`Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1288 n.10
`(Fed. Cir. 2017), as indicating “it is ‘highly disfavored’ to construe claim
`terms in a way that a phrase or limitation is rendered meaningless”). Patent
`Owner cites dictionary definitions that “define ‘threshold’ using definite
`articles” in support. PO Resp. 21 (citing Exs. 2012 and 2013); Ex. 2011
`¶ 52.
`
`Claim 5 depends from claim 1 to add that the processor “wait[s] for a
`time delay prior to the triggering of the second alarm.” Ex. 1001, 14:58–62.
`Patent Owner contends claim 5 does not justify the Institution Decision’s
`preliminary construction. See PO Resp. 26–28; Ex. 2011 ¶¶ 54–64. Patent
`Owner argues “[a] time-delay condition is distinct from an additional
`oxygen saturation value-measurement condition,” so the addition of a time
`delay is consistent with Patent Owner’s claim construction. PO Resp.
`26–27; Ex. 2011 ¶¶ 61–62. Patent Owner asserts the Institution Decision’s
`preliminary construction would improperly “subsume or obviate the oxygen
`saturation value-measurement condition” in claim 1, rendering it
`“meaningless,” based on the unrelated time delay condition in claim 5. PO
`Resp. 26–27; Sur-reply 5–6; Ex. 2011 ¶¶ 61–62. Patent Owner provides a
`Venn diagram to illustrate this contention. PO Resp. 27–28; Ex. 2011 ¶ 63.
`Turning to the ’218 patent specification, Patent Owner asserts “each
`description of ‘alarm threshold’ . . . refers to the most extreme value that
`must be exceeded to trigger the alarm.” PO Resp. 19; Ex. 2011 ¶¶ 49–51,
`59–61. Patent Owner cites several specification descriptions of alarm
`thresholds, including the adaptive alarm threshold AT, as supporting this
`assertion. PO Resp. 19–20 (citing Ex. 1001, Figs. 1 and 6, 2:58–62,
`
`18
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`3:10–23, 3:40–42, 4:43–47, 5:5–7, 6:35–38, 7:53–8:6, 11:18–25). Patent
`Owner also asserts the ’218 patent’s usage of the claim phrase “based on”
`and the similar phrase “based upon” is consistent with and confirms Patent
`Owner’s proposed construction of limitation 1(i). Id. at 23–24 (citing
`Ex. 1001, code (57), 5:5–7); Sur-reply 6; Ex. 2011 ¶¶ 59–60. Patent Owner
`cites Wisconsin Alumni Research Foundation v. Apple Inc., 905 F.3d 1341,
`1351–52 (Fed. Cir. 2018), as “rejecting a proposed construction that would
`improperly ‘expand the scope of the claims far beyond anything described in
`the specification.’” PO Resp. 26.
`Patent Owner additionally contends Petitioner’s witness Dr. Yanulis
`agrees with Patent Owner’s claim construction. See id. at 21–22 (citing
`Ex. 1003 ¶¶ 26–27); id. at 24–25 (citing Ex. 2014, 192:3–9); Sur-reply 4–5.
`
`Petitioner’s Post-Institution Construction of Limitation 1(i)
`c)
`Petitioner agrees with the Institution Decision’s preliminary
`construction of limitation 1(i). See Pet. Reply 2–10. Thus, Petitioner
`contends this limitation should be construed to mean “exceeding the second
`alarm threshold is at least one condition required to trigger an alarm.” Id.
`at 3.
`
`Considering the claim language, Petitioner argues Patent Owner’s
`construction “is improperly restrictive.” Id. at 3, 8. According to Petitioner,
`“construing claim language to exclude elements is disfavored in the absence
`of support ‘in the words of the claim’ or through an ‘express disclaimer or
`independent lexicography in the written description that would justify
`adding that negative limitation.’” Id. at 3 n.1 (citing Omega Eng’g, Inc. v.
`Rayteck Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003)). Petitioner argues the
`
`19
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`claim phrase “based on” imparts a breadth to claim 1 that belies Patent
`Owner’s position. Id. at 3–4 (“Had the patentee intended the alarm to be
`triggered by a narrower set of conditions, it could have so stated[.]”);
`Ex. 1040 ¶¶ 51–53. Petitioner cites a dictionary definition of the term “base
`on” as meaning “to use particular ideas or facts” (plural) to make a decision,
`as “refut[ing] Patent Owner’s position that ‘based on’ means that other
`oxygen saturation conditions cannot be included.” Pet. Reply 5 (citing
`Ex. 1043); Ex. 1040 ¶ 52. Petitioner cites two District Court decisions that,
`Petitioner asserts, construed the claim phrase “based on” to be “an
`open-ended term.” Pet. Reply 6–7 (citing Intellectual Ventures II LLC v.
`Sprint Spectrum L.P., No. 2:17-cv-662-JTG-RSP, 2018 WL 6018625, at *16
`(E.D. Tex. Nov. 16, 2018); Apple Inc. v. Motorola, Inc., No. 1:11-cv-08540,
`2012 WL 12537293, at *9 (N.D. Ill. Mar. 19, 2012)).
`Considering the ’218 patent specification, Petitioner asserts the
`patent’s usage of the term “based on” supports Petitioner’s construction.
`Pet. Reply 5 (citing Ex. 1001, code (57)); Ex. 1040 ¶ 51. Also according to
`Petitioner, the ’218 patent’s disclosure that “the alarm is triggered after
`falling below the adaptive threshold and remaining below the adaptive
`threshold after a time delay” further supports Petitioner’s construction. Pet.
`Reply 4–6 (emphasis by Petitioner) (citing Ex. 1001, 6:35–44, 9:12–20,
`11:18–32, claims 5–6); Ex. 1040 ¶¶ 54–57.
`Petitioner further asserts “the result of [Patent Owner’s] proposed
`construction is nonsensical,” because it would defeat the ’218 patent’s
`purpose of addressing non-actionable alarms. Pet. Reply 8. Petitioner
`reasons that, when a time delay is implemented as expressly contemplated in
`the ’218 patent, and after the time delay period begins at the moment the
`
`20
`
`
`
`IPR2020-01078
`Patent RE47,218
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
