`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`FOSSIL GROUP, INC.,
`FOSSIL STORES I, INC.,
`FOSSIL PARTNERS, L.P.,
`OURA HEALTH OY, AND
`ONEPLUS TECHNOLOGY (SHENZHEN) CO., LTD.
`
`Petitioners,
`
`v.
`
`OMNI MEDSCI, INC.,
`
`Patent Owner.
`
`___________
`
`Case IPR2025-01249
`Patent No. 9,055,868
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`___________
`
`PETITION FOR INTER PARTES REVIEW
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`U.S. Patent No. 9,055,868
`Petition for Inter Partes Review
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`TABLE OF CONTENTS
`Page
`I. INTRODUCTION ........................................................................................... 1
`II. MANDATORY NOTICES UNDER 37 C.F.R. §42.8 .................................... 3
`A. Real Party-in-Interest ............................................................................ 3
`B. Related Matters ...................................................................................... 3
`C. Lead and Back-Up Counsel ................................................................... 4
`III. PAYMENT OF FEES ..................................................................................... 5
`IV. REQUIREMENTS FOR INTER PARTES REVIEW ...................................... 6
`A. Grounds for Standing ............................................................................ 6
`B. Identification of Challenge .................................................................... 6
`1. The Specific Art on Which the Challenge Is Based ................... 6
`2. Statutory Grounds on Which the Challenge Is Based ................ 7
`V. ’868 PATENT AND PROSECUTION HISTORY ......................................... 7
`A. ’868 Patent ............................................................................................. 7
`B. Prosecution History ............................................................................. 11
`VI. §325(d) AND §314(a) DISCRETION DOES NOT APPLY ........................ 13
`A. §325(d) ................................................................................................ 13
`B. §314(a) ................................................................................................. 14
`VII. LEVEL OF ORDINARY SKILL IN THE ART ........................................... 17
`VIII. CLAIM CONSTRUCTION .......................................................................... 17
`A. Means-Plus-Function Terms ............................................................... 18
`IX. GROUNDS OF UNPATENTABILITY ........................................................ 19
`A. Ground 1: Mault (Claims 7, 10-11, 14) ............................................... 19
`1. Overview of Mault (Ex.1004) ................................................... 19
`2. Claim Chart ............................................................................... 22
`B. Ground 2: Mault in view of Mitsui (Claim 9) ..................................... 46
`C. Grounds 3-4: Grounds 1-2 in view of Pologe (Claims 7-11, 14)........ 51
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`1. Overview of Pologe .................................................................. 51
`2. Motivation to Combine Mault with Pologe .............................. 52
`3. Claim Mappings ........................................................................ 56
`D. Grounds 5-8: Grounds 1-4 in view of Kiani (Claims 7-11, 13-
`14) ........................................................................................................ 61
`1. Element [7.e] ............................................................................. 61
`2. Claim 13 .................................................................................... 67
`X. SECONDARY CONSIDERATIONS ........................................................... 68
`XI. CONCLUSION .............................................................................................. 69
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`EXHIBIT LIST
`Exhibit No. DESCRIPTION
`1001 U.S. Patent No. 9,055,868 (“’868”)
`1002 File History of U.S. Application No. 17/078,771 (“’868FH”)
`1003 Declaration of Brian Anthony in Support of Petition for Inter
`Partes Review of U.S. Patent No. 9,055,868 (“Anthony”)
`1004 U.S. Patent Pub. No. 2003/0208113 (“Mault”)
`1005 JP Publication No. 2000074829A (Certified English Translation)
`(“Mitsui”)
`1006 U.S. Patent No. 5,891,022 (“Pologe”)
`1007 U.S. Patent No. 6,526,300 (“Kiani”)
`1008 U.S. Patent No. 5,377,674 (“Kuestner”)
`1009 U.S. Patent No. 4,244,045 (“Nosu”)
`1010 U.S. Patent No. 6,067,463 (“Jeng”)
`1011 U.S. Patent No. 6,049,727 (“Crothall”)
`1012 U.S. Patent No. 5,660,163 (“Schulman”)
`1013
`Defendants’ Supplemental Invalidity and Subject Matter
`Eligibility Contentions, July 18, 2025. Omni MedSci, Inc. v.
`Samsung Electronics Co., Ltd. et al., No. 2:24-cv-01070-JRG-
`RSP (E.D. Tex.)
`1014 Omni MedSci, Inc. v. Apple Inc., 2:18-cv-00134-RWS, Dkt. No.
`211 (E.D. Tex. June 24, 2019) (“CC Order”)
`1015 Apple Inc. v. Omni Medsci, Inc., No. IPR2019-00916, Paper 1
`(P.T.A.B. Apr. 10, 2019) (“’533-Pet.”)
`1016 Apple Inc. v. Omni Medsci, Inc., No. IPR2019-00916, Paper 39
`(P.T.A.B. Oct. 14, 2020) (“’533-FWD”)
`1017
`Declaration of Brian Anthony in Support of Apple Inc.’s Petition
`for Inter Partes Review of U.S. Patent No. 9,651,533 submitted
`in IPR2019-00916, Ex.1015 (“’533-Anthony”)
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`Exhibit No. DESCRIPTION
`1018 U.S. Patent No. 6,757,001 (“Allport”)
`1019 U.S. Patent No. 6,641,533 (“Causey”)
`1020
`Second Amended Docket Control Order, June 16, 2025. Omni
`MedSci, Inc. v. Samsung Electronics Co., Ltd. et al., No. 2:24-cv-
`01070-JRG-RSP (E.D. Tex.)
`1021 U.S. Patent No. 6,727,930 (“Currans”)
`1022 U.S. Patent No. 3,609,475 (“Kaposhilin”)
`1023 U.S. Patent No. 7,020,508 (“Stivoric”)
`1024 JP Publication No. 2000074829 (Original Japanese Publication)
`1025 U.S. Patent No. 6,597,345 (“Hirshberg”)
`1026 U.S. Provisional Patent App. No. 60/212,319
`1027 Apple Inc. v. Omni Medsci, Inc., No. IPR2021-00453, Paper 1
`(P.T.A.B. Jan. 22, 2021) (“’484-Pet.”)
`1028 Apple Inc. v. Omni Medsci, Inc., No. IPR2021-00453, Paper 22
`(P.T.A.B. Aug. 3, 2022) (“’484-FWD”)
`1029 Reserved
`1030
`Declaration of Brian Anthony in Support of Petition for Inter
`Partes Review of U.S. Patent No. 10,517,484 submitted in
`IPR2021-00453, Ex.1027 (“’484-Anthony”)
`1031 U.S. Patent No. 5,544,357 (“Huei”)
`1032 U.S. Patent No. 4,817,050 (“Komatsu”)
`1033 E.F. Schubert, Light-Emitting Diodes (Cambridge Univ. Press,
`2nd ed. reprinted 2014)
`1034 Joseph D. Bronzino, “The Biomedical Engineering Handbook,”
`(1995)
`1035 U.S. Patent No. 5,122,943 (“Pugh”)
`1036 U.S. Patent No. 6,661,167 (“Eliashevich”)
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`Exhibit No. DESCRIPTION
`1037 U.S. Patent No. 7,001,058 (“Inditsky”)
`1038 U.S. Patent No. 6,424,851 (“Berman”)
`1039 U.S. Patent No. 9,651,533 (“’533”)
`1040 U.S. Patent No. 10,517,484 (“’484”)
`1041 Declaration of Jonathan Bradford in Support of Petition for Inter
`Partes Review of U.S. Patent No. 9,055,868
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`TABLE OF ABBREVIATIONS
`Abbreviation DESCRIPTION
`Claims / Challenged
`Claims Claims 7-11, 13-14 of the ’868
`IPR Inter Partes Review
`Petitioners
`Petitioners Samsung Electronics Co. Ltd., Samsung
`Electronics America Inc., Fossil Group, Inc., Fossil
`Stores I, Inc., Fossil Partners, L.P., Oura Health Oy,
`and OnePlus Technology (Shenzhen) Co., Ltd.
`PO Patent Owner
`POSITA Person of Ordinary Skill in the Art
`Board Patent Trial and Appeal Board
`EDTX Eastern District of Texas
`Texas Case Omni MedSci, Inc. v. Samsung Electronics Co., Ltd.
`et al., No. 2:24-cv-01070-JRG-RSP (E.D. Tex.)
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`LIST OF CHALLENGED CLAIMS
`[7.pre] A diagnostic system comprising:
`[7.a] a light source comprising: one or more semiconductor diodes generating
`an input light beam; and
`[7.b] a lens system configured to receive at least a portion of the input light
`beam and to communicate at least the portion of the input light beam onto a part of
`a user’s body comprising blood, wherein at least the portion of the input light beam
`is used in a measurement on a user;
`[7.c] a software application capable of generating data based at least in part
`on the measurement on the user, wherein the data represents at least in part
`physiological information associated with the user;
`[7.d] the software application capable of operating on a control system
`adapted to receive, store and process at least a portion of the physiological
`information,
`[7.e] the control system having a touch-screen, circuitry for obtaining position
`information from a location sensor, and a wireless transceiver to transmit wireless
`data over a wireless link, the wireless data comprising at least a part of the
`physiological information, wherein the control system is further capable of receiving
`voice input signals and manually entered input signals; and
`[7.f] a host comprising: a digital file for receiving and storing at least a portion
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`of the wireless data; control logic at the host to process at least the portion of the
`wireless data to generate a status of the user; a memory storage device for recording
`the status; and an output for communicating at least a portion of the status or
`associated information over a communication link to one or more display output
`devices, wherein the one or more display output devices are located remotely from
`the host.
`[8] The diagnostic system of claim 7, wherein the light source comprises a
`plurality of semiconductor diodes that are further coupled to a multiplexer capable
`of combining the plurality of semiconductor diodes and generating the input light
`beam comprising one or more wavelengths.
`[9] The diagnostic system of claim 7, wherein at least the portion of the input
`light beam is adapted for use in a diagnostics to measure a property of the blood,
`wherein the diagnostics comprise a spectroscopic procedure, wherein the
`spectroscopic procedure is based at least in part on a comparison of amplitudes at a
`plurality of associated wavelengths transmitted or reflected from the blood.
`[10] The diagnostic system of claim 7, wherein the control system is further
`coupled to a headset or a heads-up display.
`[11] The diagnostic system of claim 7, wherein the control logic includes
`voice recognition software to process at least a portion of the voice input signals,
`and wherein the control system further comprises a voice recognition module.
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`[13] The diagnostic system of claim 7, wherein the control system is further
`coupled to a proximity sensor.
`[14] The diagnostic system of claim 7, wherein the control system is further
`coupled to an audio output device capable of communicating at least a part of the
`processed portion of the physiological information.
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`Pursuant to §§311-319 and §42.1, 1 Samsung Electronics Co. Ltd. , Samsung
`Electronics America Inc. , Fossil Group, Inc., Fossil Stores I, Inc., Fossil Partners,
`L.P., Oura Health Oy, and OnePlus Technology (Shenzhen) Co., Ltd. (“Petitioners”)
`respectfully petition for inter partes review of claims 7 -11, 13 -14 (“Claims” or
`“Challenged Claims”) of U.S. Patent No. 9,055,868 (Ex.1001, “’868”). There is a
`reasonable likelihood—and it is highly likely—that at least one challenged claim is
`unpatentable as explained herein. Petitioners request review of the Claims and
`judgment finding them unpatentable under §103.
`I. INTRODUCTION
`The ’868 patent ’s purported invention relates to “a waveguide structure”
`“implemented in a medical device” that “ uses optical signal wavelengths ” to
`“perform surgery and/or spectroscopy on a patient” to detect cancerous tissue .
`E.g., ’868, 17:3-18:41, Figs. 6A, 6B. At a high level, the Challenged Claims (7-11,
`13-14) broadly recite a diagnostic system comprising a light source that uses output
`light beams to perform measurements on a user that are transmitted to and processed
`by software on a control system and a host. ’868, 1:39 -2:4, 5:44-55, 9:39-10:13,
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`1 Section cites are to 35 U.S.C. (pre-AIA) or 37 C.F.R. as context indicates. All
`emphasis/annotations added unless noted. Figure annotations herein generally quote
`the Claims for reference. Citations herein are exemplary and not meant to be limiting.
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`24:35-25:20, 25:25-30. Anthony, ¶43.
`But such diagnostic systems were already well known in the art. For example,
`before the ’868, Mault disclosed “using at least one semiconductor laser or light
`emitting diode” to measure a user’s “blood glucose levels” and sending these
`measurements to a “personal digital assistant (PDA) [with] a software program” as
`well as a “remote server system” for processing. Mault, [0014] -[0015], [0020]-
`[0021], [0077], [0079]. Anthony, ¶44.
`The additional limitations in claims 8-11, and 13-14 add nothing new. They
`merely recite known features, such as a common spectroscopic technique for
`performing physiological measurements, a multiplexer, a headset, an audio output
`device, and using a proximity sensor, which were already disclosed in Mault and/or
`other art, as discussed below. See §IX. Anthony, ¶¶45-46.
`In addition to the fact that the references relied on herein were not considered
`by the examiner during prosecution, the examiner’s Notice of Allowance relied on
`the following limitation (recited in claim 1) as a reason for allowance, when it does
`not appear in the Challenged Claims: “one or more waveguide structures configured
`to receive at least a portion of the one or more wavelengths and to communicate at
`least the portion of the one or more wavelengths to an output end of the one or more
`waveguide structures to form an output beam .” Ex. 1002 ( ’868FH), 182-183.
`Anthony, ¶¶54-59.
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`Accordingly, Petitioners request that the Patent Trial and Appeal Board
`(“Board”) institute trial and find the Challenged Claims unpatentable.
`II. MANDATORY NOTICES UNDER 37 C.F.R. §42.8
`A. Real Party-in-Interest
`Petitioners Samsung Electronics Co. Ltd., Samsung Electronics America, Inc.,
`Fossil Group, Inc., Fossil Stores I, Inc., Fossil Partners, L.P., Oura Health Oy, and
`OnePlus Technology (Shenzhen) Co., Ltd. , in addition to Ouraring, Inc. and
`Guangdong OPPO Mobile Telecommunications Corp., Ltd., are the real parties-in-
`interest. No other party had access to or control over the present Petition, and no
`other party funded or participated in preparation of the present Petition.
`B. Related Matters
`The ’868 is the subject of the following co-pending cases:
`• Omni Medsci, Inc. v. Samsung Elec tronics. Co., Ltd. et al., 2:24-cv-01070-
`JRG-RSP (E.D. Tex.) (“Texas Case”);
`• Omni MedSci, Inc. v. Whoop, Inc., 1:25-cv-00140-JLH (D. Del.); and
`Petitioners are also concurrently filing a petition for IPRs of U.S. Patent Nos.
`9,651,533 (IPR2025-01250), 10,874,304 (IPR2025-01251), 11,160,455 (IPR2025-
`01252), 12,193,790 (IPR2025-01253), 12,268,475 (IPR2025-01254) asserted in the
`Texas Case, and petitions for PGR of U.S. Patent Nos. 12,268,475 (PGR2025-00063)
`and 12,193,790 (PGR2025 00064).
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`C. Lead and Back-Up Counsel
`Lead Counsel Backup Counsel
`James L. Davis, Jr.
`Reg. No. 57,325
`ROPES & GRAY LLP
`525 University Avenue, 8th Floor
`Palo Alto, CA 94301
`Phone: +1-650-617-4000
`Fax: +1-617-235-9492
`james.l.davis@ropesgray.com
`
`Samsung-Omni-Ropes-IPR-
`Service@ropesgray.com
`
`Mailing address for all PTAB
`correspondence:
`ROPES & GRAY LLP
`IPRM—Floor 43
`Prudential Tower
`800 Boylston Street
`Boston, Massachusetts 02199-3600
`Hyun-Joong Kim
`Reg. No. 79,936
`ROPES & GRAY LLP
`1211 Avenue of the Americas
`New York, NY 10036
`Phone: +1 212-596-9000
`Fax: +1-617-235-9492
`Daniel.Kim@ropesgray.com
`
`Frances Zhang
`Reg. No. 73,589
`ROPES & GRAY LLP
`2099 Pennsylvania Avenue, N.W.
`Washington, DC 20006-6807
`Phone: +1-202-508-4600
`Fax: +1-617-235-9492
`frances.zhang@ropesgray.com
` Jasjit S. Vidwan
`Reg. No. 72,080
`MAYER BROWN LLP
`1999 K Street, NW
`Washington, DC 20006-1101
`Tel.: 202.263.3065
`JVidwan@mayerbrown.com
`
`Robert G. Pluta
`Reg. No. 50,970
`MAYER BROWN LLP
`71 S. Wacker Drive
`Chicago, IL 60606
`Tel.: 312.701.8641
`RPluta@mayerbrown.com
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`Lead Counsel Backup Counsel
` Jared A. Smith
`Reg. No. 73,749
`FISH & RICHARDSON P.C.
`12860 El Camino Real, Suite 400
`San Diego, CA 92130
`Phone: +1 858-678-4702
`Fax: +1 858-678-5099
`jasmith@fr.com
`
`Ricardo J. Bonilla
`Reg. No. 65,190
`FISH & RICHARDSON P.C.
`1717 Main Street, Suite 5000
`Dallas, TX 75201
`Phone: +1 214-760-6150
`Fax: +1 214-747-2091
`rbonilla@fr.com
` Jack Shaw
`Reg. No. 72,262
`CHERRY JOHNSON SIEGMUND
`JAMES PC
`8140 Walnut Hill Lane, Suite 105
`Dallas, Texas 75231
`Tel: 254-732-2242
`Fax: 866-627-3509
`jshaw@cjsjlaw.com
`Petitioners consent to electronic service of documents to the email addresses
`identified above.
`III. PAYMENT OF FEES
`The undersigned authorizes the Office to charge the fee required by §42.15(a)
`and any additional fees that might be due to Deposit Account No. 18-1945, under
`Order No. 110797-0060-651.
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`IV. REQUIREMENTS FOR INTER PARTES REVIEW
`A. Grounds for Standing
`Pursuant to §42.104(a), Petitioners certify the ’ 868 is available for IPR.
`Petitioners and any real parties-in-interest are not barred or estopped from requesting
`IPR challenging the Claims on the grounds identified herein.
`B. Identification of Challenge
`Pursuant to §§42.104(b) and (b)(1), Petitioners request IPR of the Claims and
`that the Board cancel the same as unpatentable.
`1. The Specific Art on Which the Challenge Is Based
`Petitioners rely upon the following art (Anthony, ¶¶70-71):
`Name Ex. Publication Filed Published/
`Issued
`Prior
`art
`under at
`least
`Mault 1004 US 2003/0208113 7/18/2001 11/6/2003 §102(e)
`Mitsui 1005 JP 2000074829A 9/2/1998 3/14/2000 §102(b)
`Pologe 1006 US 5,891,022 9/25/1996 4/6/1999 §102(b)
`Kiani 1007 US 6,526,300 6/16/2000 2/25/2003 §102(e)
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`Each of the above references is prior art to the Claims based on 9/3/2002, the
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`earliest provisional application priority date listed in the ’868’s priority claim.2
`2. Statutory Grounds on Which the Challenge Is Based
`Ground Claim(s) Basis References
`1 7, 10-11, 14
`§103
`Mault
`2 9 Mault in view of Mitsui
`3-4 7-11, 14 Grounds 1-2 in view of Pologe
`5-8 7-11, 13-14 Grounds 1-4 in view of Kiani
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`Anthony, ¶¶72, 79-187.
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`V. ’868 PATENT AND PROSECUTION HISTORY
`A. ’868 Patent
`As previewed above (Section I), the Challenged Claims relate to an
`embodiment of the ’868 patent involving “an optical signal wavelength in the mid-
`IR range … used to perform a medical procedure for the early detection of tissue
`abnormalities such as cancer cells.” ’868, 18:24-41; Figs. 9C. Anthony, ¶47.
`For example, Figure 9C of the ’868 patent illustrates a laser “pump source
`940” used for “generating an optical signal wavelength in the mid-IR range” “for the
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`2 If AIA applies, these references are prior art under § 102(a)(1) and/or §102(a)(2)
`for the same reason. Petitioners take no position as to the appropriate priority date
`of the ’868. Anthony, ¶¶4-8, 60-63.
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`early detection of … cancer” (’868, 17:34-36, 18:24-41). ’868, Fig. 9C.
`
`The “pump source 940” contains a “pump laser 942” with “two laser diodes,”
`942a and 942b . ’868, 22:56- 23:9, Fig. 9C . The laser diodes 942a and 942b
`“generat[e] pump signals 943a and 943b,” “each centered at a desired
`wavelength.” ’868, 22:56-23:9. Anthony, ¶49.
`The pump source 940 also includes a “multiplexer 944” (“MUX”). ’868,
`22:56-23:9, Figs. 9A-9C ; Fig. 9C. “Multiplexer 944 can comprise any device
`capable of combining pump signals 943, such as a wavelength division multiplexer”
`(“WDM”). ’868, 23:5-7; Fig. 9C. For example, “ multiplexer 944” is capable of
`“wavelength multiplexing pump signals 943a and 943b to form a pump output
`signal,” which is then sent to a “Raman wavelength shifter and/or a Raman oscillator”
`which includes a “lens on the delivery fiber for improved focusing of optical signal[s]
`on the patient” to “perform a medical procedure for the early detection of … cancer,”
`such as “spectroscopic measurement[s].” ’868, 18:24- 44, 22:56-58, 23:10-25, Fig.
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`9C. For example, “differential spectroscopy” may be performed, which involves
`taking “measurements…at several wavelengths” and “compar[ing]” them “to each
`other.” ’868, 2:34 -45, 18:33-48. According to the ’868 patent, “measuring the
`differential transmission of the tissue at two or more wavelengths, such as 5 microns
`and 6.1 microns may: improve the signal- to-noise ratio of the cancer cell
`signature.” ’868, 18:48-51. Anthony, ¶50.
`Separately, the ’868 patent discusses how a medical device may be remotely
`controlled to perform medical procedures. ’868, 9:39 -50. As shown in annotated
`Figure 2 below, “medical device control system 300” includes a “medical device
`210,” which “communicate[s] data” over “communication link 305” to a “system
`150,” and a “host 270,” which is “capable of collecting, entering, processing, storing,
`retrieving, amending, and/or dispatching medical data .” ’868, 7:22-38, 9:39-50,
`9:65-10:13, 10:28-43, Fig. 2. For example, in one embodiment, the “medical device
`10 may comprise one or more sensors … capable of detecting when medical device
`10 is in close proximity to and/or in contact with tissue ” to assist the “medical
`professional and/or controller” with remotely operating the device. ’868, 6:14-31.
`Anthony, ¶51.
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`’868, Fig. 2. Anthony, ¶51.
`System 150 also includes a “communication device 155” through which a
`user can input “voice instructions, ” an “auxiliary input device 165 ,” such as a
`“joystick, a computer mouse, … [or] touchscreens,” and a “display device 160. ”
`9:39-50, Figs. 2, 4. Anthony, ¶52.
`For example, Figure 4 of the ’868 patent illustrates a “ block diagram
`illustrating a flow of command signals from a medical professional to a medical
`device in a medical device control system 500” in which t he “ medical device
`control system 500 can be substantially similar to … control system 300 of FIG.
`2” and includes an “auxiliary input device 585 … substantially similar to the
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`structure and function of auxiliary input devices 165,” a “communication device
`550” (like “communication device 155”), and a “display device 580” (like “display
`device 160”). ’868, 14:22-38, 15:38-42, 15:67-16:3. Additionally, the ’868 patent
`also describes an “ audio output device 587 capable of communicating data
`associated with medical device 570…. such as a speaker.” ’868, 15:49- 61, Fig. 4.
`Anthony, ¶53.
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`’868, Fig. 4. Anthony, ¶53.
`B. Prosecution History
`The ’868 issued from U.S. Pat. App. 14/476,082 (“’082-App.”), filed 9/3/2014
`which claims priority through a series of continuations t o provisional application
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`U.S. Prov. Pat. App. 60/408,025, filed 9/3/2002. The claims were allowed as filed,
`and the Examiner issued no prior art rejections during prosecution. Anthony,
`¶¶54-55.
`In issuing the Notice of Allowance, the Examiner noted that the prior art did
`not teach or suggest the combination of the following two limitations recited in then-
`pending independent claim 21 (issued claim 1, not challenged here):
`1) “a plurality of semiconductor diodes with light beams; a multiplexer
`capable of combining the plurality of semiconductor diode light beams and
`generating at least a multiplexed light beam comprising one or more
`wavelengths; one or more waveguide structures configured to receive at
`least a portion of the one or more wavelengths and to communicate at least
`the portion of the one or more wavelengths to an output end of the one or
`more waveguide structures to form an output beam; and a lens system
`configured to receive at least a portion of the output beam and to
`communicate at least the portion of the output beam onto a part of a user'
`s body comprising blood to perform a measurement on a use;” and
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`2) “a software application capable of generating data based at least in part on
`the measurement on the user, wherein the data represents at least in part
`physiological information associated with the user; the software
`application capable of operating on a control system adapted to receive,
`store and process at least a portion of the physiological information, the
`control system having a touch- screen, a proximity sensor, and a wireless
`transceiver to transmit wireless data over a wireless link, the wireless data
`comprising at least a part of the physiological information, wherein the
`control system is further capable of receiving voice input signals and
`manually entered input signals; and a host comprising: a digital file for
`receiving and storing at least a portion of the wireless data; control logic at
`the host to process at least the portion of the wireless data to generate a
`status of the user; a memory storage device for recording the status; and an
`output for communicating at least a portion of the status or associated
`information over a communication link to one or more display output
`devices, wherein the one or more display output devices are located
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`remotely from the host.”
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`’868FH, 182-183. Anthony, ¶¶56-57.
`Notably, the combination of these two groups of limitations that appeared to
`overcome the prior art of record was not recited in Challenged Claim 7 (then-pending
`independent claim 27), which is broader than independent claim 1 explicitly
`addressed by the Examiner. Rather, claim 7 only recited the second group of
`limitations, but not the first. Anthony, ¶58.
`Thus, it appears that in allowing all claims, the Examiner did not properly
`examine whether Challenged Claim 7 actually disclosed the purportedly
`distinguishing feature in independent claim 1. And indeed, for the reasons set forth
`below, these concepts were already well known as demonstrated by the art cited
`herein, and Challenged Claim 7 and its challenged dependent claims (8- 11, 13-14)
`should be found unpatentable. §IX. Anthony, ¶59.
`VI. §325(D) AND §314(A) DISCRETION DOES NOT APPLY
`A. §325(d)
`Under the Advanced Bionics framework, there is no basis for discretionary
`denial under §325(d) as the grounds raised by this Petition are not the same or
`substantially the same as the art and arguments raised during prosecution of
`the ’868 patent. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte
`GmbH, IPR2019-01469, Pap. 6, *8 (precedential). Anthony, ¶¶76-187.
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`The references relied upon in the Grounds—Mault, Mitsui, Pologe, and
`Kiani —were not cited in an IDS or otherwise identified by the Examiner, or applied
`to reject claims during ’868’s prosecution. The Examiner also never considered the
`testimony of Petitioners’ expert Brian Anthony regarding the scope and content of
`these documents. Anthony, ¶¶73-187.
`Even if the art or arguments were substantially the same, the Examiner
`erred in a manner material to the patentability of the Claims. Because the
`Examiner “did not expressly consider” nor issue any rejections based on the art relied
`on in this petition, it is difficult, if not impossible, to explain “why the Examiner
`allowed the claims” or “how the Examiner might have considered the argu ments
`presented in the Petition.” Bowtech, Inc. v. MCP IP, LLC, IPR2019-00379, Pap. 14,
`*20 (declining to exercise §325(d) discretion) . To the extent art considered by the
`Examiner was substantially the same as the references identified in the Grounds, the
`Examiner erred by not rejecting the Claims for the reasons discussed in §IX .
`Anthony, ¶¶73-187.
`The Board should not deny institution under §325(d).
`B. §314(a)
`The Texas Case also does not warrant exercising discretion under §314(a).
`Factor 1 weighs in favor of institution. Petitioners intend to seek a stay of the
`Texas Case pending the outcome of this IPR, along with other IPRs related to the
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`litigation dispute. At the time of institution, it is highly unlikely that the Court will
`have conducted a Markman hearing, which is currently scheduled for February 13,
`2026. Ex.1020, 4. The EDTX has routinely granted stays prior to claim
`construction, since cases have “not reached such an advanced stage that it would
`weigh against a stay.” Broadphone LLC v. Samsung Elecs. Co. , No. 2:23 - CV-
`00001-JRG-RSP, 2024 WL 3524022, at *2-3 (E.D. Tex. July 24, 2024).
`While Factors 2 and 3 are neutral or at most weigh slightly against institution,
`they deserve little weight given Petitioners’ diligence in preparing and filing this
`Petition.
`Factor 4 weighs strongly in favor of institution. Petitioners hereby stipulate
`that, if the PTAB institutes this IPR, Petitioners will not pursue in the Texas Case (1)
`the specific grounds asserted in this IPR or any ground that was raised or could have
`been raised in an IPR against the Challenged Claims; or (2) combinations of the prior
`art asserted in this IPR with any other type of prior art against the Challenged Claims.
`Factor 5 is neutral or weighs at most only slightly against institution. While
`Petitioners and Patent Owner (PO) are the same parties in the Texas Case, institution
`and a public trial record of the important invalidity grounds in the Petition will reduce
`issues for the public, including all parties besides Petitioners who currently are or
`may in the future be subject to litigation involving the ’868.
`Factor 6 weighs strongly in favor of institution. The Petition is strong and
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`presents compelling unpatentability arguments that were overlooked during
`prosecution. The primary reference, Mault, discloses all aspects of the claimed
`diagnostic system with a light source that uses light beams to perform measurements
`on a user and a control system and a host for processing these measurements. The
`additional limitations were well-known in the art and further described in Mitsui,
`Pologe, and Kiani . See §IX. Anthony , ¶¶44-46, 76-187. There is a significant
`public interest against “leaving bad patents enforceable,” Thryv, Inc v. Click-ToCall
`Techs., LP, 590 U.S. 45, 55 (2020).
`Additionally, the Patent Owner has not developed strong settled expectations
`with regard to the ’868. The ’868 issued in 2015 but was never asserted until June
`30, 2023—right before it expired on August 29, 2023. Cheetah Omni, LLC v. Whoop,
`Inc., Docket No. 6-23-cv-00478 (W.D. Tex, 2023). That “a patent may have been
`in force for years but may not have been …asserted” is considered a “persuasive
`reason[] why the Board should review challenged claims several years after their
`issuance date.” Intel, Corp. v. Proxense, LLC, IPR2025-00327, Pap. 12, *2 (PTAB
`June 26, 2025).
`The ’868 also covers substantially similar subject matter and claim language
`as the challenged patents in the concurrently filed IPRs noted in § II.B above—all
`concurrently filed IPRs challenge patents related to light -based systems for
`physiological measurements and claims reciting similar componentry and
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`functionality used therein. It therefore would be a more efficient use of the