Apple Inc. v. Omni MedSci, Inc., Not Reported in Fed. Rptr. (2024)
` © 2025 Thomson Reuters. No claim to original U.S. Government Works. 1
`2024 WL 3084509
`Only the Westlaw citation is currently available.
`United States Court of Appeals, Federal Circuit.
`APPLE INC., Appellant
`v.
`OMNI MEDSCI, INC., Appellee
`2023-1034
`|
`Decided: June 21, 2024
`Appeal from the United States Patent and Trademark Office,
`Patent Trial and Appeal Board in No. IPR2021-00453.
`Attorneys and Law Firms
`Jeffrey Paul Kushan , Sidley Austin LLP, Washington, DC,
`argued for appellant. Also represented by Thomas Anthony
`Broughan, III, Joshua John Fougere; Michael Roberts, Dallas,
`TX.
`Thomas A. Lewry, Brooks Kushman PC, Royal Oak, MI,
`argued for appellee. Also represented by John S. Leroy ,
`Christopher C. Smith.
`Before Reyna and Cunningham, Circuit Judges, and Albright,
`District Judge 1 .
`Opinion
`Albright, District Judge.
`*1 Appellant Apple Inc. appeals from a Final Written
`Decision of the Patent Trial and Appeal Board finding Apple
`failed to show that claims 3–6 and 8–14 of U.S. Patent
`No. 10,517,484 were unpatentable. 2 Those claims were
`upheld because the Board found prior art did not disclose
`the claim limitation “configured to identify an object” (the
`“identifying limitation”). In contrast, the Board found claim
`16 unpatentable, which is like upheld claims 3 and 8 except
`for the claim limitation “configured to detect an object” (the
`“detecting limitation”).
`Apple appeals on two grounds, one substantive and one
`procedural. First, Apple claims that the Board incorrectly
`construed the identifying limitation. Second, Apple argued
`below that U.S. Patent No. 9,241,676 (“Lisogurski”) and
`U.S. Patent No. 8,108,036 (“Tran”)
` disclose the identifying
`limitation even under appellee Omni MedSci, Inc.’s proposed
`construction (the “alternative argument”). Apple faults the
`Board for considering this an improper new reply argument.
`Because the Board erred only in disregarding the alternative
`argument, we affirm-in-part
`, vacate-in-part, and remand to
`the Board for further consideration.
`BACKGROUND
`I
`Omni MedSci, Inc. is the assignee of U.S. Patent
`No. 10,517,484, entitled “Semiconductor Diodes-based
`Physiological Measurement Device with Improved Signal-to-
`Noise Ratio.” The patent is generally directed to a “wearable
`device includ[ing] a measurement device to measure a
`physiological parameter adapted to be placed on a wrist
`or an ear of a user.” ’484 patent
`, at [57]. The wearable
`device measures the physiological parameter by emitting light
`and analyzing the light that is reflected back. See id. The
`specification has sections corresponding to various blood
`constituents of potential interest, such as glucose, ketones,
`and hemoglobin A1c. Id. at 11:20; 13:1; 14:23.
`Claims 3, 8, and 16 are relevant to the arguments presented in
`this appeal. Although each depends on a different independent
`claim, none of the limitations of any independent claim—or
`any claim upon which claims 3, 8, or 16 depend—are at issue.
`The three claims state:
`3. The system of claim 2, wherein the wearable device is
`at least in part configured to identify an object
`, and to
`compare a property of at least some of the output signal to
`a threshold.
`8. The system of claim 7, wherein the wearable device is at
`least in part configured to identify an object, and a property
`of at least some of the output signal is compared by at least
`one of the wearable device, the smart phone or tablet to a
`threshold.
`*2 16. The system of claim 15, wherein the wearable
`device is at least in part configured to detect an object, and
`a property of at least some of the output signal is compared
`to a threshold.
`’484 patent
`, 37:43–46; 38:63–67; 40:33–36 (emphases
`added).
`Petitioner WHOOP, Inc. Ex1012
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`Apple Inc. v. Omni MedSci, Inc., Not Reported in Fed. Rptr. (2024)
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`II
`A
`Apple petitioned to institute an inter partes review of claims
`1–23 of the ’484 patent. J.A. 203, 220. One ground is relevant
`to this appeal. Apple argued that the combination of prior
`art references Lisogurski, Tran, and U.S. Patent Application
`Publication No. 2005/00494468 (“Carlson”) rendered claims
`3, 8, and 16 (among others) obvious. J.A. 220. For the
`identifying and detecting limitations, Apple argued that
`Lisogurski discloses sending an error signal when its sensor
`has fallen off the subject—which requires identifying and
`detecting when an object, such as a wrist or an ear, is in range
`of the sensor. J.A. 275. For the limitation “configured ... to
`compare a property of at least some of the output signal to
`a threshold,” the petition claimed that Lisogurski discloses
`comparing detected signals, such as blood oxygen saturation
`,
`to thresholds or target values. J.A. 276. Similarly, the petition
`argued that Tran discloses monitoring health information,
`such as pulse oximetry
` measurements, and comparing it
`to user-provided parameters for generating health alerts.
`J.A. 271, 276. Neither the petition nor the patent owner's
`preliminary response discussed the identifying or detecting
`limitations in their claim construction sections. J.A. 232–34;
`4761–62.
`The Board instituted the IPR. J.A. 5162. The institution
`decision did not construe the identifying and detecting
`limitations.
`See J.A. 5169–70.
`Omni's patent owner response disputed, for the first time,
`the construction of the “identify an object” limitation in
`Claims 3 and 8 and the “detect an object” limitation in Claim
`16. J.A. 5242–45. For the “identify an object” limitation,
`Omni proposed the construction “to recognize or establish an
`object as being a particular thing.” J.A. 5244. For the “detect
`an object” limitation, Omni proposed the construction “to
`discover or notice the existence or presence of something.”
`J.A. 5245. The proposed constructions were based off the
`Random House Kernerman Webster's College Dictionary
`(2010). J.A. 5242; 5244. In both cases, Omni argued that the
`’484 patent
` claims and specification confirmed the dictionary-
`based plain meaning. J.A. 5242–45.
`In its reply brief, Apple argued that the terms of
`the identifying and detecting limitations were commonly
`understood and needed no construction. J.A. 5378. To the
`extent construction was necessary, Apple proposed the same
`construction for both limitations: “to discover or determine
`the existence, presence, or fact of an object.” J.A. 5378–79.
`For the “identify an object” limitation, Apple argued that its
`construction aligned with the claims and specification, which
`use the term “identify” to confirm that an object is present or
`not, rather than to take action dependent on what the object
`is. J.A. 5379. Apple argued that Lisogurski discloses both
`the identifying and detecting an object limitations based on
`Apple's proposed construction. J.A. 5381–82.
`Apple also argued in its reply brief that Lisogurski
`and Tran disclose the identifying limitation even under
`Omni's proposed construction. J.A. 5383. Apple pointed to
`Lisogurski and Tran's techniques for measuring blood oxygen
`saturation
` and other blood constituents, id., which Apple
`relied on in the petition to show “compar[ing] a property of
`at least some of the output signal to a threshold.” J.A. 275–
`76. Apple argued that measuring blood constituents requires
`identifying and quantifying them, which Lisogurski and Tran
`perform using the same reflected light measuring technique
`disclosed in the
`’484 patent. J.A. 5383.
`B
`*3 The Board issued a Final Written Decision finding claim
`16 unpatentable but refusing to find claims 3–6 and 8–14
`unpatentable. J.A. 61. Starting with claim construction, the
`Board construed “to identify an object” as “to recognize
`or establish an object as being a particular thing” and “to
`detect an object” as “to discover or notice the existence or
`presence of something.” J.A. 10. The Board rested its analysis
`on the presumption that different claim terms are presumed
`to have different meanings. J.A. 9; see SimpleAir, Inc. v.
`Sony Ericsson Mobile Commc'ns AB, 820 F.3d 419, 431
`(Fed. Cir. 2016)
`. The Board rejected Apple's arguments for
`applying the same meaning—the dictionary-based meaning
`of “detect”—to both limitations. Id. The Board noted the
`different dictionary definitions for “identify” and “detect” and
`issued the constructions above, which are “consistent with the
`dictionary definitions.” J.A. 9–10.
`Turning to the petition's grounds, the Board held that the
`combination of Lisogurski, Carlson, and Tran rendered claim
`16 obvious. J.A. 54. Applying its construction of claim
`16's detecting limitation, the Board agreed with Apple that
`Lisogurski discloses the detecting limitation by recognizing
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`when its sensor has fallen off the subject, which implies the
`ability to recognize the subject's presence. J.A. 50–51.
`In contrast, the Board held that the combination of Lisogurski,
`Carlson, and Tran did not render claims 3 or 8 obvious. J.A.
`54. The Board recited Apple's argument in its reply brief
`that Lisogurski discloses the identifying limitation because
`“Lisogurski and Tran each teach techniques for measuring
`blood oxygen saturation
` and other blood constituents.”
`J.A. 51. The Board further recited Omni's sur-reply
`counterarguments that “measuring” is not “identifying,” and
`that Apple's reply argument was procedurally improper. Id.
`The Board ultimately sided with Omni's position “that the
`Petition does not sufficiently articulate support for Petitioner's
`assertions.” Id.
` The Board cited the discrepancy between
`Apple's petition arguments, which focused on comparing
`signals to thresholds, and the identifying limitation as
`construed, which focused on recognizing or establishing
`objects to be particular things. J.A. 51–52.
`Apple timely appealed. We have jurisdiction under 28 U.S.C.
`§ 1295(a)(4)(A)
`.
`STANDARD OF REVIEW
`We review the Board's ultimate claim construction de novo.
`Google LLC v. EcoFactor, Inc., 92 F.4th 1049, 1054 (Fed. Cir.
`2024). We review any underlying fact findings for substantial
`evidence. Id. We review for abuse of discretion the Board's
`decision to disregard a reply argument as exceeding the proper
`scope. Axonics, Inc. v. Medtronic, Inc., 75 F.4th 1374, 1380
`(Fed. Cir. 2023)
`.
`DISCUSSION
`I
`We begin with claim construction. While the Board could
`have done more to justify its reasoning, we nevertheless
`uphold its construction on appeal. “We review the Board's
`claim construction based on intrinsic evidence de novo ....”
`Dionex Softron GmbH v. Agilent Techs., Inc., 56 F.4th 1353,
`1358 (Fed. Cir. 2023)
`. Under this standard, and based on
`the intrinsic evidence before us, we affirm the Board's
`construction of the claim limitation “identify an object” as “to
`recognize or establish an object as being a particular thing.”
`Well-settled claim construction principles govern this dispute.
`“Different claim terms are presumed to have different
`meanings.” Bd. of Regents of the Univ. of Tex. Sys. v. BENQ
`Am. Corp.
`, 533 F.3d 1362, 1371 (Fed. Cir. 2008). A party,
`however, can rebut that presumption in the context of a
`particular patent. See, e.g. , Powell v. Home Depot U.S.A.,
`Inc., 663 F.3d 1221, 1231–32 (Fed. Cir. 2011). For example,
`in the past we have found that different terms in the same
`patent have the same meaning because they have been used
`interchangeably. See, e.g., Baran v. Med. Device Techs., Inc.,
`616 F.3d 1309, 1316 (Fed. Cir. 2010); Tehrani v. Hamilton
`Med., Inc., 331 F.3d 1355, 1361 (Fed. Cir. 2003).
`*4 Here, Apple argues that the Board erred in construing
`the limitation “identify an object” in claims 3 and 8 as “to
`recognize or establish an object as being a particular thing.”
`Appellant Br. 30. According to Apple, this claim limitation
`should have the same meaning as claim 16's “detect an
`object” limitation, which is “to discover or determine the
`existence, presence, or fact of an object.” Appellant Br. 26.
`According to Apple, the patent uses the terms “identify”
`and “detect” interchangeably, and thus this evidence rebuts
`the presumption that different claim terms have different
`meaning. Apple's attempts to rebut this presumption, as
`discussed below, fail.
`First, Apple argues that because claims 3 and 8 parallel claim
`16 except for using “identify” versus “detect,” these terms are
`interchangeable. But that turns the presumption of different
`meanings on its head. It was within the patentee's power to
`draft claims 3, 8, and 16 to all claim “detecting an object.” Cf.
`Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335,
`1349 (Fed. Cir. 2012)
` (“The fact that the two adjacent claims
`use different terms in parallel settings supports the district
`court's conclusion that the two terms were not meant to have
`the same meaning ....”). They did not do so. Thus, we reject
`Apple's argument.
`Second, Apple argues that claims 3 and 8, like claim 16, only
`require the claimed wearable device to discover or determine
`the existence, presence, or fact of an object—
`i.e., detecting
`said object. Appellant Br. 33. According to Apple, nothing
`in claims 3 and 8 requires the claimed wearable device to
`act based on the determined identity of an object. Id. But
`“identify” must be given the full scope of its plain and
`ordinary meaning absent lexicography or disclaimer, neither
`of which Apple alleges. See Thorner v. Sony Comput. Ent.
`Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Accordingly,
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`when claims 3 and 8 require the claimed device to “identify
`an object,” the claims require a determination of the identity
`of an object, even if the claims never do anything with
`that identity. For these reasons, claims 3 and 8's limitation
`“identify an object” is not interchangeable with the “detect
`an object” limitation in claim 16, no matter what the other
`limitations of claims 3 and 8 do.
`Apple next argues that the specification uses the terms
`“identify” and “detect” interchangeably. Appellant Br. 33.
`We reject Apple's position. Apple refers to the various
`blood constituents discussed in the specification as the
`claimed “objects” that claims 3 and 8 “identify” and that
`claim 16 “detects.” 3 Apple notes that these constituents
`are “identif[ied]” in some sections and “detect[ed]” in
`others through the same technique: measuring reflected
`light and comparing the results against known spectra.
`Apple emphasizes a paragraph on cholesterol that discusses
`“detect[ing]” it in the first sentence and “identify[ing]”
`its concentration in the last sentence. ’484 patent, 15:31–
`48. The problem with Apple's argument is that it is a
`cobbled together generalization of various sections of the
`specification, and one that often ignores distinctions in
`language at that. For example, the discussion of “detect[ing]”
`glucose that Apple highlights is actually about detecting
`glucose lines
` in a spectrum. Id. at 18:46–52. Overall, we
`reject Apple's argument that the specification consistently
`and interchangeably refers to “identify” and “detect” in a
`manner sufficient to overcome the usual presumption that
`those different terms have different meanings.
`*5 Finally, Apple separately argues that the Board's claim
`construction is erroneous because it does not track the law.
`According to Apple, the Board improperly relied on extrinsic
`dictionary definitions rather than intrinsic evidence when
`construing the “identify an object” limitation. Appellant
`Br. 34. Apple cites the well-known principle that extrinsic
`evidence, such as dictionary definitions, is less significant
`than and cannot be used to contradict intrinsic evidence.
`Phillips v. AWH Corp.
`, 415 F.3d 1303, 1317, 1322–23 (Fed.
`Cir. 2005) (en banc). While that is a correct recitation of
`the law, it is beside the point. As previously noted, we
`determine that the Board's construction of the “identify an
`object” limitation is correct based on the intrinsic evidence.
`In conclusion, we affirm the Board's construction that
`“identify an object” in claims 3 and 8 means “to recognize
`or establish an object as being a particular thing.” Apple has
`not rebutted the presumption that “identifying an object” and
`“detecting an object” have different meanings. Because that
`is Apple's only claim construction challenge, we affirm the
`Board's construction.
`II
`We turn next to Apple's procedural argument. Apple argues
`that the Board abused its discretion when it refused to
`consider Apple's arguments in its reply brief. Appellant
`Br. 38. Specifically, Apple's arguments in its reply brief
`concerning the Lisogurski, Carlson, and Tran references were
`made in response to Omni's newly raised claim construction
`of “identify an object” in its patent owner response. Appellant
`Br. 38–40. We agree with Apple.
`After briefing in this appeal was completed, we decided
`Axonics, Inc. v. Medtronic, Inc., 75 F.4th 1374 (Fed. Cir.
`2023)
`. That opinion crystallized and distilled principles
`already inherent in our past decisions. The rule the Axonics
`court stated squarely governs. Accordingly, we find the
`Board abused its discretion in refusing to consider Apple's
`alternative argument.
`In Axonics
`, this Court held that “where a patent owner
`in an IPR first proposes a claim construction in a patent
`owner response, a petitioner must be given the opportunity
`in its reply to argue and present evidence of anticipation or
`obviousness under the new construction, at least where it
`relies on the same embodiments for each invalidity ground as
`were relied on in the petition.” 75 F.4th at 1384. The Axonics
`Court derived support for this rule from a discussion of past
`Federal Circuit precedent. See id.
` at 1381–83. Two cases
`are of particular importance here. First, SAS Institute, Inc. v.
`ComplementSoft, LLC, 825 F.3d 1341, 1351 (Fed. Cir. 2016),
`rev'd on other grounds sub nom. SAS Inst., Inc. v. Iancu ,
`138 S. Ct. 1348 (2018), held that the PTAB may not change
`a claim construction between institution and Final Written
`Decision without giving the parties reasonable notice and
`an opportunity to argue under the new construction. Second,
`Hamilton Beach Brands, Inc. v. f'real Foods LLC, 908 F.3d
`1328, 1338–39 (Fed. Cir. 2018)
`, rejected a challenge to a Final
`Written Decision's adoption of constructions first proposed
`in a patent owner response because the petitioner had an
`opportunity to respond. See Axonics, 75 F.4th at 1382
` (“[W]e
`reiterated the rule that, under the APA, the Board cannot adopt
`a new claim construction without giving the petitioner an
`opportunity to respond. But we held that those requirements
`had been met because the petitioner was able to respond in its
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`reply ....”). In light of these and other cases, the Axonics Court
`held that the PTAB was required to consider the petitioner's
`new argument and evidence on anticipation and obviousness
`raised in the reply, since the patent owner had advanced a
`new claim construction position in its patent owner response
`and the new patentability argument was responsive to the
`construction.
`See id. at 1378–79, 1383–84.
`*6 Under both Axonics and earlier precedents, the Board
`abused its discretion here in refusing to consider Apple's reply
`argument. Omni's patent owner response offered specific
`proposed constructions for the identifying and detecting
`limitations for the first time. Compare
` J.A. 5242–45,
`with J.A. 4761–62. Apple responded to this argument by
`citing embodiments relied on by the Lisogurski/Carlson/Tran
`ground in the petition. See
` J.A. 5383; 276. And the Board,
`after having said nothing about the identifying limitation's
`construction in the institution decision, adopted Omni's
`proposed construction. See J.A. 10, 5169–70. As in Axonics,
`the patent owner here proposed a new construction for the
`first time in the patent owner response. See 75 F.4th at 1378,
`1384. As in Hamilton Beach, the parties and the Board did
`not discuss the construction of the relevant limitation during
`the institution phase. See 908 F.3d at 1335. And as in SAS,
`the Board adopted a different claim construction in its Final
`Written Decision without giving the petitioner an opportunity
`to present argument under that construction. See 825 F.3d at
`1351. The Board therefore disregarded our consistent caselaw
`when disposing of the alternative argument.
`Omni's attempts to defend the Board's decision are
`unpersuasive. In the briefs, Omni relied on two main
`precedential cases: Acceleration Bay, LLC v. Activision
`Blizzard Inc. , 908 F.3d 765 (Fed. Cir. 2018), and Wasica
`Finance GmbH v. Continental Automotive Systems, Inc., 853
`F.3d 1272 (Fed. Cir. 2017). Both cases are distinguishable.
`While the petitioner in Acceleration Bay raised new evidence
`of obviousness in response to patent owner's construction of
`a term, there were no indicators that said construction was
`proposed for the first time in a patent owner response. See
`908 F.3d at 775. Wasica involved a reply that “effectively
`abandoned its petition in favor of a new [obviousness]
`argument.” 853 F.3d at 1286–87. Apple has done nothing so
`dramatic here. Compare J.A. 275–276, with J.A. 5383.
`At oral argument, Omni claimed it has always maintained
`that “identifying” should have its plain and ordinary meaning:
`the dictionary-based definition in the patent owner's response.
`But the patent owner in Axonics
` also argued that its two-
`input construction was the plain and ordinary meaning of
`the relevant limitations. Patent Owner's Response at 2,
`Axonics Modulation Techs., Inc. v. Medtronic, Inc., No.
`IPR2020-00680 (P.T.A.B. Dec. 22, 2020) (“[T]he language of
`the claims and the teaching of the ’758 patent specification ...
`compel the plain meaning of these claims as requiring two
`separate inputs ....”). And it did so after failing to discuss
`the construction of those limitations in the patent owner's
`preliminary response, just like Omni. See Axonics, 75 F.4th
`at 1378
`. Omni also lays blame at Apple's feet, claiming
`that Apple's reply sought to fix an error in the petition's
`treatment of claim 16 and thereby started this dispute.
`But Omni's focus on Apple's actions is misplaced. Axonics
`instead puts the focus on what patent owners have done.
`See id. at 1384 . At the preliminary response stage, Omni
`did not propose a construction for “identify an object.” Post-
`institution, Omni proposed that “identify an object” should
`mean “to recognize or establish an object as being a particular
`thing.” That constituted a claim construction first proposed in
`the response, so Apple was entitled to respond to it. Finally,
`Omni warns of petitioners sandbagging patent owners with
`new claim constructions. This is ironic, given that Axonics
`was decided based on concerns of patent owners sandbagging
`petitioners. Id.
` Omni's fears are unfounded. Petitioners who
`hold their best claim construction arguments back for reply
`don't just need to worry about the Board disregarding them
`as procedurally improper—they also worry about the Board
`refusing to institute the petition. We therefore reject Omni's
`arguments.
`We conclude that the Board abused its discretion in not
`considering Apple's argument properly raised in reply in
`response to Omni's construction for the identifying limitation.
`We do not address the merit of this argument on this record.
`We leave such issues for the Board to consider on remand.
`III
`*7 Apple also appeals the Board's finding that Apple failed
`to show that claims 4–6 and 9–14 were unpatentable. The
`sole reason for this holding was that Apple had not shown the
`unpatentability of claims 3 and 8, on which claims 4–6 and
`9–14 depend. 4 See
` J.A. 49, 52, 55, 59. Because we find the
`Board abused its discretion in its analysis of claims 3 and 8,
`we also find the Board's analysis of claims 4–6 and 9–14 to
`contain the same error.
`Petitioner WHOOP, Inc. Ex1012
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`CONCLUSION
`We have considered the parties’ remaining arguments and
`find them unpersuasive. While we affirm the Board's
`construction of the limitation “identify an object” in claims 3
`and 8, we vacate the Board's Final Written Decision regarding
`claims 3–6 and 8–14 of the ’484 patent
`, and remand for further
`proceedings consistent with this opinion.
`AFFIRMED-IN-PART, V ACATED-IN-PART AND
`REMANDED
`COSTS
`No costs.
`All Citations
`Not Reported in Fed. Rptr., 2024 WL 3084509
`Footnotes
`1 Honorable Alan D Albright, District Judge, United States District Court for the Western District of Texas, sitting
`by designation.
`2 The Board found unpatentable several other claims of the ’484 patent. However, appellee Omni MedSci, Inc.
`does not appeal any aspect of the Final Written Decision, including the Board's unpatentability finding on
`claim 16 or its claim constructions.
`3 Omni challenges Apple's specification citations as improper new evidence on appeal. Appellee Br. 19–20. We
`reject this challenge, for “[t]he doctrine of waiver does not preclude a party from supporting its original claim
`construction with new citations to intrinsic evidence of record.” Seabed Geosolutions (US) Inc. v. Magseis
`FF LLC
`, 8 F.4th 1285, 1289 (Fed. Cir. 2021).
`4 Some of these claims were subject to different grounds with additional prior art. See J.A. 220. However,
`because Apple had not alleged that the additional prior art disclosed the identifying limitation, the Board
`nevertheless hinged its holding on Apple's failure to show the unpatentability of claims 3 and 8. See J.A.
`55, 59.
`End of Document © 2025 Thomson Reuters. No claim to original U.S. Government Works.
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