U.S. Patent No. 9,651,533
`Petition for Inter Partes Review
`
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`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 IPR2025-01250
`Patent No. 9,651,533
`
`___________
`
`PETITION FOR INTER PARTES REVIEW
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`U.S. Patent No. 9,651,533
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`TABLE OF CONTENTS
`I. INTRODUCTION .......................................................................................... 1
`II. MANDATORY NOTICES UNDER 37 C.F.R. §42.8 ................................... 2
`A. Real Party-in-Interest ........................................................................ 2
`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. ’533 PATENT AND PROSECUTION HISTORY ........................................ 7
`A. ’533 ....................................................................................................... 7
`B. Prosecution History ............................................................................ 9
`VI. §325(d) AND §314(a) DISCRETION DOES NOT APPLY ....................... 11
`A. §325(d) ............................................................................................... 11
`B. §314(a) ............................................................................................... 13
`VII. LEVEL OF ORDINARY SKILL IN THE ART .......................................... 15
`VIII. CLAIM CONSTRUCTION ......................................................................... 16
`A. Board’s Constructions in Prior ’533-IPR ...................................... 17
`B. District Court Constructions ........................................................... 18
`IX. GROUNDS OF UNPATENTABILITY ....................................................... 18
`A. Collateral Estoppel Applies to the Independent Claims
`Upon Which All Challenged Claims Depend ................................ 19
`B. Ground 1: Lisogurski (claims 6, 12, 14) ......................................... 21
`1. Overview of Lisogurski (Ex. 1025) ....................................... 21
`2. Motivation to Modify Lisogurski .......................................... 28
`3. Independent claims 5 and 13 (cancelled) ............................. 30
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`4. Dependent Claims 6, 12, and 14 ............................................ 41
`C. Ground 2: Lisogurski in view of Carlson (Ex. 1028) (Claims
`6, 11-12, 14, 18) ................................................................................. 45
`1. Overview of Carlson .............................................................. 45
`2. Motivation to Combine Lisogurski and Carlson ................ 48
`3. Independent Claims 5 and 13 (cancelled) ............................ 53
`4. Dependent Claims 6, 12, 14 ................................................... 56
`5. Claims 11/18 ............................................................................ 57
`D. Grounds 3-4: Lisogurski (alone or in view of Carlson) in
`further view of Tam (Claims 6, 14) ................................................. 62
`1. Independent Claims 5 and 13 (cancelled) ............................ 62
`2. Claim 6 .................................................................................... 62
`3. Claim 14 .................................................................................. 65
`X. SECONDARY CONSIDERATIONS .......................................................... 65
`XI. CONCLUSION ............................................................................................. 66
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`EXHIBIT LIST
`Exhibit No. DESCRIPTION
`1001 U.S. Patent No. 9,651,533 (“’533”)
`1002 File History of U.S. Application No. 14/875,709 (“’533FH”)
`1003 Declaration of Brian Anthony in Support of Petition for Inter
`Partes Review of U.S. Patent No. 9,651,533 (“Anthony”)
`1004
`Declaration of Brian Anthony in Support of Petition for Inter
`Partes Review of U.S. Patent No. 9,651,533 submitted in
`IPR2019-00916, Ex. 1003 (“’533-Anthony”)
`1005 Apple Inc. v. Omni Medsci, Inc., No. IPR2019-00916, Paper 1
`(P.T.A.B. Apr. 10, 2019) (“’533-Pet.”)
`1006 Apple Inc. v. Omni Medsci, Inc., No. IPR2019-00916, Paper 23
`(P.T.A.B. Jan. 31, 2020) (“’533-POR”)
`1007 Apple Inc. v. Omni Medsci, Inc., No. IPR2019-00916, Paper 16
`(P.T.A.B. Oct. 18, 2019) (“’533-Inst.”)
`1008 Apple Inc. v. Omni Medsci, Inc., No. IPR2019-00916, Paper 39
`(P.T.A.B. Oct. 14, 2020) (“’533-FWD”)
`1009 Omni MedSci, Inc. v. Apple Inc., No. 21-01229, ECF 69 (Fed.
`Cir. June 8, 2022)
`1010-1017 Reserved
`1018 Omni MedSci, Inc. v. Apple Inc., 2:18-cv-00134-RWS, Dkt. No.
`211 (E.D. Tex. June 24, 2019)
`1019 Omni MedSci, Inc. v. Apple Inc., 2:18-cv-00429-RWS, Dkt. No.
`152 (E.D. Tex. Aug. 14, 2019)
`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.)
`1021-1022 Reserved
`1023
`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.)
`1024 Reserved
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`Exhibit No. DESCRIPTION
`1025 U.S. Patent No. 9,241,676 (“Lisogurski”)
`1026-1027 Reserved
`1028 U.S. Patent Pub. No. 2005/0049468 (“Carlson”)
`1029 Reserved
`1030 U.S. Patent No. 7,029,628 (“Tam”)
`1031 U.S. Patent No. 8,050,730 (“Zhang”)
`1032 Reserved
`1033 U.S. Patent Pub. No. 2011/0237911 (“Lamego”)
`1034 U.S. Patent No. 5,942,749 (“Takeuchi”)
`1035 U.S. Patent No. 5,822,473 (“Magel”)
`1036 US Patent 5,592,124 (“Mullins”)
`1037 E.F. Schubert, Light-Emitting Diodes (Cambridge Univ. Press,
`2nd ed. reprinted 2014)
`1038 “The Biomedical Engineering Handbook,” by Joseph D. Bronzino
`(1995)
`1039-1058 Reserved
`1059 U.S. Patent No. 5,497,769 (“Gratton”)
`1060 U.S. Patent No. 5,827,182 (“Raley”)
`1061 U.S. Patent No. 7,764,982 (“Dalke”)
`1062-1070 Reserved
`1071 U.S. Patent No 7,005,679 (“Tarsa”)
`1072 U.S. Patent Publication No. 2010/0249550 (“Lovejoy”)
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`Exhibit No. DESCRIPTION
`1073 U.S. Patent Publication No. 2015/0057511 (“Basu”)
`1074 U.S. Patent Publication No. 2013/0327966 (“Fidler”)
`1075 U.S. Patent Publication No. 2011/0267688 (“Kleppe”)
`1076 U.S. Patent Publication No. 2005/0133691 (“Doppke”)
`1077 U.S. Patent Publication No. 2006/0184040 (“Keller”)
`1078 Reserved
`1079 U.S. Patent No. 6,339.715 (“Bahr”)
`1080 U.S. Patent No. 8,417,307 (“Presura”)
`1081-1083 Reserved
`1084 Declaration of Jonathan Bradford in Support of Petition for Inter
`Partes Review of U.S. Patent No. 9,651,533
`1085 Apple Inc. v. Omni Medsci, Inc., No. IPR2019-00916, Paper 10
`(P.T.A.B. Jul. 22, 2019) (“’533-POPR”)
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`TABLE OF ABBREVIATIONS
`Abbreviation DESCRIPTION
`Claims /
`Challenged Claims Claims 6, 11-12, 14, and 18 of the ’533
`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.)
`’533-IPR Apple Inc. v. Omni Medsci, Inc., No. IPR2019-00916
`(P.T.A.B.)
`Related EDTX
`Cases
`Omni MedSci, Inc. v. Apple Inc., 2:18-cv-00134-RWS
`(E.D. Tex.)
`Omni MedSci, Inc. v. Apple Inc., 2:18-cv-00429-RWS
`(E.D. Tex.)
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`LIST OF CHALLENGED CLAIMS1
`[5.pre] A measurement system comprising:
`[5.a] a light source comprising a plurality of semiconductor sources that are
`light emitting diodes, the light emitting diodes configured to generate an output
`optical beam with one or more optical wavelengths, wherein at least a portion of the
`one or more optical wavelengths is a near -infrared wavelength between 700
`nanometers and 2500 nanometers,
`[5.b] the light source configured to increase signal-to-noise ratio by increasing
`a light intensity from at least one of the plurality of semiconductor sources and by
`increasing a pulse rate of at least one of the plurality of semiconductor sources;
`[5.c] an apparatus comprising a plurality of lenses configured to receive a
`portion of the output optical beam and to deliver an analysis output beam to a sample
`[5.d] a receiver configured to receive and process at least a portion of the
`analysis output beam reflected or transmitted from the sample and to generate an
`output signal, wherein the receiver is configured to be synchronized to the light
`source;
`
`1 Though independent claims 5 and 13 have been cancelled and are thus not
`challenged here, they are included for context because the Challenged Claims
`depend from them.
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`[5.e] a personal device comprising a wireless receiver, a wireless transmitter,
`a display, a microphone, a speaker, one or more buttons or knobs, a microprocessor
`and a touch screen, the personal device configured to receive and process at least a
`portion of the output signal, wherein the personal device is configured to store and
`display the processed output signal, and wherein at least a portion of the processed
`output signal is configured to be transmitted over a wireless transmission link; and
`[5.f] a remote device configured to receive over the wireless transmission link
`an output status comprising the at least a portion of the processed output signal, to
`process the received output status to generate processed data and to store the
`processed data.
`[6] The system of claim 5, wherein at least one of the light emitting diodes
`emits light with a bandwidth between 20 nanometers to 40 nanometers.
`[11] The system of claim 5, wherein the receiver further comprises one or
`more filters in front of one of more detectors to select a fraction of the one or more
`optical wavelengths.
`[12] The system of claim 5, wherein the output optical beam comprises a
`plurality of optical wavelengths, and the output signal is generated in part by
`comparing signals at different optical wavelengths.
`[13.pre] A measurement system comprising:
`[13.a] a wearable measurement device for measuring one or more
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`physiological parameters, including a light source comprising a plurality of
`semiconductor sources that are light emitting diodes, the light emitting diodes
`configured to generate an output optical beam with one or more optical wavelengths,
`wherein at least a portion of the one or more optical wavelengths is a near -infrared
`wavelength between 700 nanometers and 2500 nanometers,
`[13.b] the light source configured to increase signal -to-noise ratio by
`increasing a light intensity from at least one of the plurality of semiconductor sources
`and by increasing a pulse rate of at least one of the plurality of semiconductor
`sources; the wearable measurement device comprising a plurality of lenses
`configured to receive a portion of the output optical beam and to deliver an analysis
`output beam to a sample;
`[13.c] the wearable measurement device further comprising a receiver
`configured to receive and process at least a portion of the analysis output beam
`reflected or transmitted from the sample and to generate an output signal, wherein
`the wearable measurement device receiver is configured to be synchronized to pulses
`of the light source;
`[13.d] a personal device comprising a wireless receiver, a wireless transmitter,
`a display, a microphone, a speaker, one or more buttons or knobs, a microprocessor
`and a touch screen, the personal device configured to receive and process at least a
`portion of the output signal, wherein the personal device is configured to store and
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`display the processed output signal, and wherein at least a portion of the processed
`output signal is configured to be transmitted over a wireless transmission link; and
`[13.e] a remote device configured to receive over the wireless transmission
`link an output status comprising the at least a portion of the processed output signal,
`to process the received output status to generate processed data and to store the
`processed data, and wherein the remote device is capable of storing a history of at
`least a portion of the received output status over a specified period of time.
`[14] The system of claim 13, wherein at least one of the light emitting diodes
`emits light with a bandwidth between approximately 20 nanometers to
`approximately 40 nanometers.
`[18] The system of claim 13, wherein the receiver further comprises one or
`more filters in front of one of more detectors to select a fraction of the one or more
`optical wavelengths.
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`U.S. Patent No. 9,651,533
`Petition for Inter Partes Review
`Pursuant to §§311-319 and §42.1, 2 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”
`or “Samsung”) respectfully petition for inter partes review of claims 6, 11 -12, 14,
`18 (“Challenged Claims or Claims ”) of U.S. Patent No. 9, 651,533 ( Ex. 1001,
`“’533”). 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
`Independent claims 5 and 13—from which all Challenged Claims 6, 11-12,
`14, and 18 depend—have already been cancelled. Those claims, in addition to others
`not challenged here, were found to be unpatentable by the Patent Trial and Appeal
`Board (“Board”) in a prior IPR filed by a different petitioner (IPR2019 -00916 or
`“’533-IPR”) based on at least two alternative obviousness grounds: 1) Lisogurski
`alone, and 2) Lisogurski in view of Carlson. Ex. 1008 (“’533-FWD”), 25-43. And
`2 Section cites are to 35 U.S.C. or 37 C.F.R. as context indicates. All
`emphasis/annotations added unless noted. Figure annotations herein generally quote
`the Claims fo r reference. Citations herein are exemplary and not meant to be
`limiting.
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`that decision was affirmed by the Federal Circuit. Ex. 1009.
`Though the Challenged Claims were not challenged in the prior ’533-IPR,
`they are dependent claims that merely add features already disclosed in Lisogurski
`and Carlson, and thus are likewise unpatentable. See generally §§IX.B-D. And, as
`prosecution of the ’533 further confirms, these dependent features were well-known
`in the art—the Challenged Claims recite a known bandwidth range for light emitting
`diodes (“LEDs”) (claims 6, 14), a known way to select certain wavelengths through
`the use of a conventional filter (claims 11, 18), and a known technique that compares
`signals at different optical wavelengths (claim 12). See generally §§V.B, IX.B-D.
`Ex. 1003 (“Anthony”), ¶¶70-199.
`Accordingly, Petitioners request that the Board institute trial and find the
`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.
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`B. Related Matters
`The ’533 is the subject of the following co-pending civil actions:
`Omni Medsci , Inc. v. Samsung Elec tronics Co. Ltd. et al. , 2:24-cv-01070-
`JRG-RSP (E.D. Tex) (“Texas Case”); and
`Omni MedSci, Inc. v. Whoop, Inc., 1:25-cv-00140-JLH (D. Del.).
`U.S. Patent No. 10,517,484 (“’484”), which is related to the ’ 533, is also
`subject to the following appeal: Omni Medsci, Inc. v. Apple, Inc., No. 25-1646 (Fed.
`Cir.).
`Petitioners are concurrently filing petitions for IPR of the related U.S. Patent
`Nos. 11,160,455 ( IPR2025-01252), 10,874,304 (IPR2025-01251), 12,193,790
`(IPR2025-01253), and 12,268,475 (IPR2025-01254), and petitions for Post Grant
`Review (PGR) of the related U.S . Patent Nos. 12,268,475 (PGR2025- 00063) and
`12,193,790 (PGR2025-00064). Petitioners are further concurrently filing a petition
`for IPR of U.S. Patent No. 9,055,868 (IPR2025-01249) asserted in the Texas Case.
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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
`
`
`Fan (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. 110797-0060-652.
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`IV. REQUIREMENTS FOR INTER PARTES REVIEW
`A. Grounds for Standing
`Pursuant to §42.104(a), Petitioners certify that the ’533 is available for IPR.
`Petitioners and any real parties-in-interest are not barred or estopped from requesting
`an 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, ¶¶70-75):
`Name Ex. Publication Filed Published/
`Issued
`Prior
`art
`under at
`least
`Lisogurski 1025 US 9,241,676 5/31/2012 1/26/2016 §102(e)
`Carlson 1028 US 2005/0049468 9/3/2003 3/3/2005 §102(b)
`Tam 1030 US 7,029,628 12/28/2000 4/18/2006 §102(b)
`
`Each of the above references is prior art to the Claims based on 12 /31/2012,
`the earliest provisional application priority date listed in the ’533’s earliest priority
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`claim. 3
`2. Statutory Grounds on Which the Challenge Is Based
`Ground Claim(s) Basis References
`1 6, 12, 14
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`§103
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`Lisogurski
`2 6, 11-12, 14, 18 Lisogurski in view of Carlson
`3 6, 14 Lisogurski in view of Tam
`4 6, 14 Lisogurski in view of Carlson in further
`view of Tam
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`V. ’533 PATENT AND PROSECUTION HISTORY
`A. ’533
`’533 Figure 24 shows an embodiment of the physiological measurement
`system:
`
`3 If AIA applies, these references are prior art under §102(a)(1) and/or §102(a)(2)
`for the same reason. Anthony, ¶¶ 4-8, 55-58. Petitioners take no position as to the
`appropriate priority date of the ’533.
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`’533, 26:49-28:15, Fig. 24 (annotated). Anthony, ¶44.
`The physiological measurement system includes a wearable measurement
`device 2401 that communicates physiological data measurements over link 2404 to
`a personal device 2405, such as a smart phone or tablet. ’533, 26:49-27:2. Personal
`device 2405 communicates some or all of its processed physiological data over a
`wireless transmission link 2406 to a remote device 2407, such as a cloud-based
`server, which can augment the data with additional value -added processing, e.g.,
`storing and processing the physiological data. ’533, 26:49-27:33. Anthony, ¶45.
`The wearable measurement device 2401 includes a light source that
`comprises a plurality of semiconductor sources, such as light emitting diodes that
`generate an optical beam with one or more wavelengths, typically having a
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`bandwidth of between 20 and 40 nm . ’533, 5:37-41, 20:2-4. The light source
`improves its signal-to-noise ratio by increasing the light intensity or the pulse rate of
`at least one of the semiconductor sources. ’533, 5:43-47. The wearable
`measurement device further comprises lenses configured to receive and direct light
`from the semiconductor sources to a sample, such as a user’s tissue, and a receiver
`that receives the light reflected from the tissue sample and generates an output signal.
`’533, 5:47-54, 17:44-64. An output signal is generated by comparing different
`wavelengths of the light reflected from the tissue or sample. ’533, 8:29-34. The
`receiver further includes a detector to detect and measure the light received from
`the sample. See generally, ’533, 17:44-64. Filters in front of the detector select
`wavelengths or bands to be measured. ’533, 17:50-56. Anthony, ¶46.
`B. Prosecution History
`The ’533 issued from U.S. Pat. App. 14/875,709 (“’709-App.”), filed on
`10/6/2015. During prosecution, Applicant amended the claims to additionally recite
`the dependent limitations of all Challenged Claims to overcome prior art. Ex. 1002
`(“’533FH”), 501 -502, 504 -507. But the Examiner found that these amended
`limitations were disclosed by prior art. ’533FH, 722-724, 765-766. Anthony, ¶¶47-
`49.
`In particular, w ith respect to Challenged Claims 6 and 14 (then-pending
`claims 7 and 16), which recite “wherein at least one of the light emitting diodes
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`emits light with a bandwidth between 20 nanometers to 40 nanometers”
`(’533FH, 501, 503) , the Examiner found that this limitation was taught by U.S.
`Publication No. 2013/0327966 (Fidler) ’s (Ex. 1074) disclosure of “conventional
`LEDs [that] have a bandwidth of approximately 30nm, falling between 20nm to
`40nm.” ’533FH, 723. Anthony, ¶50.
`With respect to Challenged Claims 11 and 18 (then-pending claims 12 and
`20), which recite “wherein the receiver further comprises one or more filters in
`front of one of more detectors to select a fraction of the one or more optical
`wavelengths” (’533FH, 502, 504), the Examiner found that this limitation was
`taught by U.S. Publication No. 2011/0267688 (Kleppe) ’s (Ex. 1075) disclosure of
`“the use of a filter […] in front of a detector.” ’533FH, 722-723. Anthony, ¶51.
`Finally, with respect to Challenged Claim 12 (then-pending claim 13), which
`recites “wherein the output optical beam comprises a plurality of optical
`wavelengths, and the output signal is generated in part by comparing signals at
`different optical wavelengths” (’533FH, 502) , the Examiner found that this
`limitation was taught by U.S. Publication No. 2005/0133691 (Doppke)’s (Ex. 1076)
`disclosure of “output signals generated in response to a comparison of signals
`received on the first and second input terminals.” ’533FH, 724. Anthony, ¶52.
`Applicant did not contest these findings, ’533FH, 765 -766, but instead
`amended the independent claims to additionally recite the limitation that the receiver
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`“is configured to be synchronized to the light source.” ’533FH, 761-762. The claims
`were then allowed. ’533FH, 756, 759-764, 777-785. Anthony, ¶53.
`In a subsequent IPR (the ’533 IPR), the Board held that all claims challenged
`in that IPR (including independent claims 5 and 13) were unpatentable based on the
`prior art references relied upon here, and the Federal Circuit affirmed that holding
`on appeal. See infra §§IX.B.3 and IX.C.3. Anthony, ¶54.
`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 ’533. Advanced Bionics, LLC v. MED -EL Elektromedizinische Geräte GmbH,
`IPR2019-01469, Paper 6 at 8 (P.T.A.B. Feb. 13, 2020) (precedential). The Examiner
`did not consider t he references relied upon in this Petition— Lisogurski, Carlson,
`and Tam. See generally ’533FH. Though Tam discloses the dependent limitation
`recited in claim 6 (“wherein at least one of the light emitting diodes emits light with
`a bandwidth between 20 nanometers to 40 nanometers”), just like what the Examiner
`found to be disclosed in Fidler during prosecution ( ’533FH, 723, see §V.B), Tam
`was never considered in combination with Lisogurski (alone or in combination with
`Carlson), and thus the grounds raised here are not the same or substantially the same
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`as those raised during prosecution. See Sony v. MZ Audio Scis., LLC, IPR2022-
`01544, Pap. 12, *7 (§325(d) discretion is improper where the “Examiner did not
`consider the specific combination of references asserted”).
`Even if the art and arguments were substantially the same, the Examiner
`erred in a manner material to the patentability of the Claims. Where the
`“Examiner did not expressly consider” Lisogurski, Carlson, and Tam, it is difficult,
`if not impossible to explain “why the Examiner allowed the claims” or “how the
`Examiner might have considered the arguments presented in the Petition.” Bowtech,
`Inc. v. MCP IP, LLC , IPR2019 -00379, Pap. 14, *20 (not exercising §325(d)
`discretion). If the Examiner had considered substantially the same art or arguments,
`it was error to allow the claims because, e.g., the Examiner failed to reject the Claims
`over references or combinations of references teaching a light emitting diode that
`emits light with a bandwidth of 20 to 40 nanometers, a receiver that comprises one
`or more filters in front of one of more detectors to select a fraction of the one or more
`optical wavelengths, and an output optical beam that comprises a plurality of optical
`wavelengths where the output signal is gen erated in part by comparing signals at
`different optical wavelengths. See §§IX.B-D. Indeed, the Board in the ’533-IPR
`found unpatentable independent claims 5 and 13 (upon which the Challenged Claims
`depend) based on Lisogurski and Carlson, as applied herein (see §§IX.B-D (citing
`prior FWDs)).
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`The Board should not deny institution under §325(d).
`B. §314(a)
`The Texas Case 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
`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 2/13/2026.
`Ex.1020, 4. The Eastern District of Texas (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.
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`Factor 5 is neutral or weighs at most only slightly against institution. While
`Petitioners and 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 ’533.
`Factor 6 weighs strongly in favor of institution. It is an efficient use of Board
`resources to address the unpatentability of the Claims challenged here. In the prior
`’533 IPR challenging claims of the same patent, the Board found independent claims
`5 and 13, upon which all Challenged Claims depend, unpatentable as obvious based
`on the same prior art combinations set forth here . See Embody, Inc. and Zimmer
`Biomet Holdings, Inc. v. Lifenet Health, IPR2025-00248, Paper 13 at 2-3 (P.T.A.B.
`June 26, 2025 ) (“it is an efficient use of Board resources to address the related
`patent”); Posco Co., Ltd. v. Arcelormittal, IPR2025-00370, Paper 10 at 3 (P.T.A.B.
`June 25, 2025) (The Board’s prior unpatentability decision on related patents “ tips
`the balance against discretionary denial. ”); Tesla, Inc., v. Intellectual Ventures II
`LLC, IPR2025 -00217, Paper 9 at 2 (P.T.A.B. June 13, 2025). T he Challenged
`Claims here (which were not challenged in the prior ’533 IPR) merely recite
`additional well-known limitations disclosed by the same references previously relied
`upon by the Board in the prior ’533 IPR. See §IX.B-D. Indeed, the Examiner’s
`uncontested findings during prosecution of the ’533 confirms the well-known nature
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`of those additional