Trials@uspto.gov
`571-272-7822
`
`Paper 12
`Entered: December 7, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SOTERA WIRELESS, INC.,
`Petitioner,
`
`V.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2020-01078
`Patent RE47,218 E
`
`Before GEORGE R. HOSKINS, JENNIFER MEYER CHAGNON,and
`AMANDAF. WIEKER,Administrative Patent Judges.
`
`HOSKINS,Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U S.C. § 314
`
`
`571-272-7822
`
`Paper 12
`Entered: December 7, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SOTERA WIRELESS, INC.,
`Petitioner,
`
`V.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`IPR2020-01078
`Patent RE47,218 E
`
`Before GEORGE R. HOSKINS, JENNIFER MEYER CHAGNON,and
`AMANDAF. WIEKER,Administrative Patent Judges.
`
`HOSKINS,Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U S.C. § 314
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`I.
`
`INTRODUCTION
`
`Sotera Wireless, Inc. (“Petitioner”) has filed a Petition (Paper 1,
`
`“Pet.”) pursuant to 35 U.S.C. §§ 311-319 to institute an inter partes review
`of claims 1-10 and 12-18 of U.S. Patent No. RE47,218 E (“the
`
`°218 patent”).
`Masimo Corporation (“Patent Owner”) has filed a Preliminary
`
`Response (Paper6, “Prelim. Resp.”) to the Petition.
`
`Weauthorized additional briefing to address Patent Owner’s argument
`
`that we should denyinstitution under 35 U.S.C. § 314(a) and Apple Inc.v.
`
`Fintiv, Inc., (PR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential)
`
`(‘“Fintiv Order”). See Paper 7. Accordingly, Petitioner filed a Reply
`(Paper 10, “Prelim. Reply”) to the Preliminary Response, and Patent Owner
`filed a Sur-reply (Paper 11, “Prelim. Sur-reply”) to the Reply.
`
`Institution of review requires Petitioner to demonstrate a reasonable
`
`likelihood of prevailing with respect to at least one challenged claim.
`35 U.S.C. § 314(a). Applying that standard on behalf of the Director
`(37 C.F.R. § 42.4(a)), weinstitute an inter partes review to determine
`whether Petitioner demonstrates by a preponderance of the evidence that
`
`claims 1-10 and 12-18 are unpatentable.
`
`Il.
`
`BACKGROUND
`
`A.
`
`Real Parties-in-Interest and Related Proceedings
`
`Sotera Wireless, Inc. and Hon Hai Precision Industry Co., Ltd. are the
`
`real parties-in-interest for Petitioner, and Masimo Corporation is the real
`party-in-interest for Patent Owner. Pet. 1; Paper 5, 1. Also, Masimo Corp.
`v. Sotera Wireless, Inc. and Hon Hai Precision Industry Co. Ltd., Civil
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`Action No. 3:19-cv-01100-BAS-NLS(S.D. Cal.) (“the District Court
`
`Litigation”) is a related judicial matter. Pet. 2; Paper5, 1.
`
`B.
`
`The '218 Patent
`
`The ’218 patent concerns a system for monitoring a patient’s blood
`
`oxygen saturation (SpO2), and generating an alarm if the saturation falls too
`
`low. See Ex. 1001, Abstract, 1:34-39, 2:54-58. The system includes an
`
`optical sensor attached to the patient’s finger, to emit light into the fingertip
`
`tissue and detectlight 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:
`100
`
`$p02 (%)
`
`£
`
`OFF
`
`ti
`ta
`iT9_,—>|163
`
`t3
`
`14
`
`time
`
`Figure 1 of the ’218 Patent.
`
`Figure 1 illustrates a previously known oxygen saturation measurement
`
`system having two “fixed-threshold alarm” schemes,at “delay” alarm
`
`threshold D, and at “no delay” alarm threshold ND,. Id. at 2:54—-59
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`(emphasis added). If the patient’s measured oxygen saturation 110 falls and
`
`stays below delay threshold D, for a time period greater than time delay TD,
`
`as shown in Figure 1 from timet; to time tz, then delayed alarm 140is
`
`triggered. Id. at 2:59-3:1. If the patient’s measured oxygensaturation 110
`
`falls below no delay threshold ND,, as shownin Figure 1 at time ts, then
`
`immediate alarm 150 is triggered without delay. Jd. at 2:61-62, 3:24.
`
`According to the ’218 patent, the fixed nature of delay alarm
`
`threshold Dy undesirably leadsto “a baseline drift problem,” which can
`
`generate a “nuisance”or “false” alarm. Jd. at 2:54-56, 3:24-46 (describing
`
`Fig. 3). The ’218 patent therefore proposes “an adaptive alarm system,”
`
`whichadjusts the delay alarm threshold downwards when an oxygen
`
`saturation baseline is established at lower values. Jd. 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.” Jd. at 4:4-8.
`
`Thisis illustrated in Figure 6 of the ’218 patent, reproduced here:
`
`t 600
`
`Parameter
`610
`
`L
`
`1
`
`—
`
`
`
`ce
`Max fe eee _—-
`
`630
`614
`£ 632
`— BL — parameter
`range
`
`650
`
`t
`l
`
`AT range
`ce
`638
`1
`642
`ce
`AT
`660
`B
`lg — ee He OOOO <0 -a
`648
`46
`
`>6
`
`ty
`S 692
`
`ty
`
`694
`Figure 6 of the ’218 Patent.
`
`ts
`XM 696
`
`G 690
`ume
`
`4
`
`
`
`IPR2020-01078
`Patent RE47,218E
`
`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 lowerlimit adaptive alarm threshold AT. Jd.
`
`at 5:34-36, 7:40-47. An adaptive alarm threshold AT is applied whenever
`
`the measured oxygensaturation falls within range 650, extending from lower
`
`limit L, up to maximum value Max,suchas illustrated at segments 620, 630,
`
`and 640. Jd. at 6:15—30, 7:9-67, Fig. 5B (horizontal axis values extend from
`
`Lz to Max). The adaptive thresholds AT are constrainedto lie within
`
`range 660, extending from lowerlimit L2 up to limit Li. Jd. at 6:15-30,
`
`7:9-67, Fig. 5A (adaptive threshold AT line 442 is constrained between
`
`limits L; and L, along vertical axis).
`
`In a preferred embodiment, lower limit L2 is equal to the no delay
`
`alarm threshold ND, ofthe prior art system shownin Figure 1, and limit L;
`
`is equal to the delay alarm threshold D, of the prior art system. Jd. at
`
`5:66-6:4, 6:20-34. However,the fixed threshold the prior art implementsat
`
`limit L, is replaced by adaptive thresholds AT. /d. at 6:22—34. Each
`
`individual threshold AT, during a given time period suchas t), tz, or t3, may
`
`advantageously be implemented as a time delay alarm, asthepriorart
`
`system doeswithits fixed delay alarm threshold Dy. Jd. at 6:38—43.
`
`The system determinesa baseline B of the patient’s oxygen saturation
`
`during different time periods such ast), t2, and t3.
`
`/d. at 6:11—15, 6:44—7:8.
`
`For each different baseline B, the system applies a different adaptive alarm
`
`threshold AT. Jd. at 6:15-19, Fig. 6. Specifically, the system calculates
`
`delta A as a function of the varying baseline B andthe pre-set limits L; and
`
`L» and maximum value Max. Id. at 6:15—34 (describing Fig. 4A), 7:9-39
`
`(describing Fig. 5B). Then, the adaptive alarm thresholdis set at
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`AT =B-—A.Id. at 7:27-39 (describing Fig. 5A), 7:53—-8:6 (describing
`
`Fig. 6).
`
`C.
`
`The Claims ofthe ’218 Patent
`
`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, andusesitalics to identify verbiage added during the reissue
`
`process. Jd. Dueto 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. /d. at 13:62—16:62.
`
`Accordingly, we reproduce claim 1 here, removing the bracketed
`
`verbiage andnotitalicizing 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 alarmsin 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
`
`' In other IPR proceedings, challenging other patents asserted by Patent
`Ownerin the District Court Litigation, Patent Ownerhas argued Petitioner
`uses abbreviation and spacingtricks to satisfy the Board’s word countlimits.
`Thesealleged tricks include citing to “EX 1X XX”instead of “Ex. 1xxx,” and
`omitting the full claim language, both of which Petitioner does here too. In
`the interest of fairness, Patent Owner may use these conventionsin
`preparing its Patent Owner Response. The parties also may use these
`conventionsfor any other briefing in this proceeding (e.g., Reply, Sur-reply,
`Motions to Exclude).
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`[1(c)] one or more hardwareprocessorsin electronic
`communication with the optical sensor, the one or more
`hardware processors configured to:
`
`[1(d)] determine oxygen saturation values of the
`patient overa first period of time;
`[1(e)] when at least one oxygensaturation value
`obtained overthe first period of time exceedsa first
`alarm threshold, determine whethera first alarm should
`be triggered;
`[1(f)] access a second alarm threshold to be
`applied during a second period of time subsequentto 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 lowerlimit and at an offset from the at
`least one oxygensaturation value, wherein the offsetis
`diminished as a difference betweentheat leastfirst
`oxygen saturation value and the lowerlimit diminishes;
`[1(h)] determine oxygen saturation values of the
`patient over the second period of time; and
`[1(i)] trigger a second alarm based onat least one
`value of the oxygen saturation values obtained overthe
`secondperiod of time exceeding the second alarm
`threshold.
`
`Ex. 1001, 13:62—14:40. Claim 12 recites a method comprising steps that are
`
`analogousto various system limitations of claim 1. See id. at 15:52-16:32.
`
`Claim 8 is a system claim somewhat akin to claim 1. See id. at
`
`15:1-39. Claim 8 differs from claim 1 most significantly in reciting that the
`
`processoris 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 overthefirst period of time approaches the lower
`
`limit.” Jd. at 15:19-23.
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`D.
`
`Prior Art and Asserted Grounds
`
`Petitioner asserts claims 1-10 and 12-18 are unpatentable, based on
`
`the following two grounds. See Pet. 5—6.
`
`
`
`Claims Challenged|35 U.S.C. §|References
`1-4, 7, 12-15
`
`
`5, 6, 8-10, 16-18
`Bock, Woehrle’, Kiani
`
`I. ANALYSIS
`
`A.
`
`Discretion to Deny Under 35 U.S.C. § 314(a)
`
`Patent Owner,relying on the Board’s precedential decisions in NHK°
`
`and the Fintiv Order, contends we should exercise our discretion under
`
`35 U.S.C. § 314(a) to deny institution based on the status of the District
`
`Court Litigation. See Prelim Resp. 13-19.
`
`1.
`
`Legal Standards
`
`Under35 U.S.C. § 314(a), the Director has discretion to deny
`
`institution of an inter partes review. Cuozzo Speed Techs., LLC v. Lee,
`
`136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to denya petition is
`
`a matter committed to the Patent Office’s discretion.”); SAS Inst. Inc. v.
`
`Tancu, 138 S. Ct. 1348, 1356 (2018) (“SAS”) (“[Section] 314(a) invests the
`
`Director with discretion on the question whetherto institute review.”
`
`2 Ex. 1005, U.S. Patent No. 7,079,035 B2, issued July 18, 2006.
`3 Ex. 1006, U.S. Patent No. 6,597,933 B2, issued July 22, 2003.
`4 Ex. 1007, WO 2009/093159 A1, published July 30, 2009.
`> NHKSpring Co., Ltd. v. Intri-Plex Techs., Inc., YPR2018-00752, Paper 8
`(PTAB Sept. 12, 2018) (precedential).
`
`8
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`(emphasis omitted)); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367
`
`(Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled,to institute
`
`an IPR proceeding.”).
`
`In determining whether to exercise discretion to deny institution under
`
`35 U.S.C. § 314(a), the Board considers an early trial date in related
`
`litigation as part of an assessmentofall relevant circumstancesofthe case,
`
`including the merits, in an effort to balance considerations such as system
`
`efficiency, fairness, and patent quality. Fintiv Order 5—6; see also NHK,
`
`Paper 8 at 19-20 (denyinginstitution relying, in part, on § 314(a) because
`
`the parallel district court proceeding was scheduledto finish before the
`
`Board reacheda final decision).
`
`Whenconsidering an early trial date in related litigation, the Board
`
`evaluates the following factors (““Fintiv factors”):
`
`3.
`
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceedingis instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant
`proceeding are the same party; and
`6. other circumstances that
`impact
`discretion, including the merits.
`Fintiv Order 5—6. In evaluating these factors, “the Board takes a holistic
`
`in the parallel
`
`the Board’s exercise of
`
`view of whetherefficiency and integrity of the system are best served by
`
`denying orinstituting review.” Jd. at 6.
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`2.
`
`Factual Background
`
`The progress of the District Court Litigation is pertinent to discretion
`
`under 35 U.S.C. § 314(a).. We summarize the progress as follows.
`
`On June 12, 2019, Patent Ownerfiled a Complaint (Ex. 1008) against
`
`Petitioner in the U.S. District Court for the Southern District of California.
`
`Petitioner has filed a Motion to Stay the District Court Litigation (Ex. 1036)
`
`and Patent Owneropposed (Ex. 2001). Accordingto the parties, the District
`
`Court has not yet ruled on the Motion. See Prelim. Resp. 14-15; Prelim.
`
`Reply 2-3. The District Court has vacated all Markman deadlines, including
`
`the previously scheduled November3, 2020, Markmanhearing, pendingits
`
`decision on Petitioner’s Motion to Stay. See Ex. 1037.
`
`Patent Ownerservedits infringementcontentions on January 24,
`
`2020. Ex. 1016; see Prelim. Resp. 17. Petitioner servedits invalidity
`
`contentions on March 20, 2020, which were amended on September8, 2020.
`
`Exs. 2004 & 2007; see Prelim. Resp. 17.
`
`On June 11, 2020, Petitioner filed the Petition in this proceeding. See
`
`Paper4 (according the Petition a filing date of June 11, 2020).
`
`Per the court’s Scheduling Order, which was modified on October6,
`
`2020, fact discovery closes on February 12, 2021, and expert discovery
`
`closes on May 7, 2021. Ex. 2009, 3. The Scheduling Orderalso includes a
`
`trial date of November 30, 2021. Jd. at 4.
`
`Petitioner filed a stipulation in the District Court. Ex. 1038. The
`
`stipulation states that if the Board institutes inter partes review,Petitioner
`
`“will not pursue in [the District Court Litigation] the specific grounds
`
`[asserted in the inter partes review], or on any other ground. . . that was
`
`raised or could have been reasonably raised in an IPR(i.e., any ground that
`
`10
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`could be raised under §§ 102 or 103 on the basis ofprior art patent or printed
`
`publications).” Jd. at 6—7.
`
`3.
`
`Analysis ofthe Fintiv Factors
`
`With this background, we consider each ofthe factors set forth in the
`
`Fintiv Order. We then weigh the factors and take a holistic view of whether
`
`efficiency andintegrity of the patent system are best served by denying or
`
`instituting review.
`
`Factor 1:
`whethera stay exists or is likely to be granted ifa proceedingis instituted
`
`Petitioner has filed a Motion to Stay, but the District Court has notyet
`
`ruled on the motion. Prelim. Resp. 14-15; Prelim. Reply 2-3. Patent Owner
`
`contendsa “stay is unlikely.” Prelim. Resp. 14-15. In particular, Patent
`
`Ownercontends the Southern District of California has “found that direct
`
`competition betweenthe parties [in the relevant market] evidences
`significant prejudice weighing against a stay.” Jd. at 14 (citation omitted).
`Petitioner notes, however, that in the order vacating all Markman deadlines,
`
`the “[District] Court noted that any rescheduled Markman date may not be
`
`necessary, depending on howthe [District] Court rules on the motion to
`
`stay.” Prelim. Reply 3 (citing Ex. 1037).
`
`Becausethe District Court has not ruled on the pending motion to
`
`stay, we determinethis factor does not weigh for or against denying
`
`institution in this case. See Apple Inc. v. Fintiv, Inc., TPR2020-00019,
`Paper 15 at 12 (PTAB May13, 2020) (informative) (“Fintiv DI”); Sand
`
`Revolution II, LLC v. Cont’l Intermodal Group — Trucking LLC,
`
`11
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`IPR2019-01393, Paper 24 at 7 (PTAB June 16, 2020) (informative) (“Sand
`
`Revolution’).
`
`Factor 2:
`proximity ofthe court’s trial date to the Board’s projected statutory deadline
`
`As noted above,trial in the parallel proceeding currently is set to
`
`begin on November30, 2021. Ex. 2009, 4. Patent Owner contendsthistrial
`
`date “meansthereis little opportunity for efficiency or simplification with
`
`IPR proceedings becausethe final written decision date .
`
`.
`
`. will still come
`
`on oraftertrial.” Prelim. Sur-reply 3. Petitioner contends, on the other
`
`hand,that becausethe final written decision will issue close to the scheduled
`
`trial date, and all Markman deadlines have been indefinitely vacated, this
`
`factor strongly weighsin favorofinstituting inter partes review. Prelim.
`
`Reply 34. Petitioner also notes the District Court “has already amendedits
`
`case managementorder twice—including extendingthetrial date two
`
`months.” Jd. at 3.
`
`“If the court’s trial date is earlier than the projected statutory deadline,
`
`the Board generally has weighedthis fact in favor of exercising authority to
`
`deny institution under NHK.” Fintiv Order 9. Onthe other hand, “[i]f the
`
`court’s trial date is at or around the same time as the projected statutory
`
`deadline or even significantly after the projected statutory deadline, the
`
`decision whetherto institute will likely implicate other factors discussed
`
`herein, such as the resources that have been investedin the parallel
`
`proceeding.” Id.
`
`Here, the trial is scheduled to begin around the same time as our
`
`deadline to reach a final decision. Thus, we find that this factor does not
`
`weigh for or against denyinginstitution in this case.
`
`12
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`Factor 3:
`investmentin the parallel proceeding by the court andparties
`
`Patent Ownercontends“the parties and [District] Court have already
`
`invested substantial resourceslitigating .. . patent validity.” Prelim.
`
`Resp. 16-17. As noted above,the parties have already served their
`
`respective infringement contentions and invalidity contentions. However, as
`
`Petitioner points out, all Markman deadlines have been vacated, including
`
`the Markman hearing. Prelim. Reply 3-4. Moreover, much other work
`
`remainsin the District Court Litigation as it relates to invalidity: fact
`
`discovery is ongoing, expert reports are not yet due, and substantive motion
`
`practice is yet to come. Jd. Thus,althoughthe parties and the District Court
`
`have invested someeffort in the parallel proceeding to date, further effort
`
`remains to be expendedin this case before trial. The facts here are similar to
`
`those in both recent Board informative decisions. See Sand Revolution 11;
`
`Fintiv DI 14; see also Fintiv Order 10 (“If, at the time of the institution
`
`decision, the district court has not issued ordersrelated to the patentat issue
`
`in the petition, this fact weighs against exercising discretion to deny
`
`institution under NHK.”).
`
`The Fintiv Order also recognizes that “notwithstandingthat a
`
`defendanthas oneyearto file a petition, it may impose unfair costs to a
`
`patent ownerif the petitioner, faced with the prospect of a loomingtrialdate,
`
`waits until the district court trial has progressed significantly before filing a
`
`petition at the Office.” Fintiv Order 11. The Orderinstructs the parties to
`
`explain facts relevant to the Petition’s timing. Jd.; see also id. at 11-12
`(considering timing of the Petition as part of the third Fintiv factor). Patent
`Ownerasserts Petitioner “waited until the very end of the one-year period”
`
`13
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`to file its Petition, and argues the Petition “presents arguments that overlap”
`
`with Petitioner’s March 20, 2020,invalidity contentions in the District
`
`Court. Prelim. Resp. 16. Petitioner, on the other hand, contendsit “was not
`
`dilatory in filing this petition.” Prelim. Reply 5. Petitioner explains that the
`
`parties spent six months after the complaint was filed “engagedin settlement
`
`discussions.” Jd. Further, Petitioner notes that its initial invalidity
`
`contentions were filed on March 20, 2020, which was “concurrent with the
`
`nationwide shift to ‘work from home’ and the closing of counsels’ public
`
`offices.” Jd. Petitioner contendsthat, thereafter, it “diligently worked to
`
`draft IPR petitions challenging nine patents and 183 claims,” including the
`
`present Petition. Jd. Patent Owner respondsthat “[n]ormal settlement
`
`discussions .
`
`.
`
`. cannot excuse”the delay, and reiterates its contention that
`
`Petitioner waited “until just before the statutory deadline”to file its Petition.
`
`Prelim. Sur-reply 3.
`
`Petitioner filed the present Petition on June 11, 2020, almost three
`
`monthsafter servingits initial invalidity contentions on March 20, 2020, and
`
`two days before the statutory deadline of June 13, 2020. Based on thefacts
`
`present here, wefind Petitioner’s explanation for the timing of the Petition is
`
`reasonable, notwithstanding the closeness to the statutory deadline,
`
`particularly in view of the large numberof patents and claims challenged in
`
`this and Petitioner’s other related petitions for inter partes review, as well as
`
`the increased difficulty in preparing the Petitions due to concurrent office
`
`closures. See Prelim. Reply 5.
`
`Dueto the relatively limited investment in the District Court
`
`Litigation to date and the fact that the timing of the Petition was reasonable,
`
`14
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`wefind this factor weighs in favor of not exercising discretion to deny
`
`institution under 35 U.S.C. § 314(a).
`
`Factor4:
`overlap betweenissues raised in the petition andin the parallel proceeding
`
`Patent Ownercontends “Petitioner relies on the same combination of
`
`references, namely, Bock and Kiani,to allege invalidity of Claims 1-4,7,
`
`and 12-15 in the District Court [Litigation]’” and the present Petition.
`
`Prelim. Resp. 17; Exs. 2004 & 2007 (Invalidity Contentions).
`
`Petitioner notes the Petition “seeks review ofall claims of the
`
`[°218 patent], not merely those at issue in the [District Court Litigation].”
`Prelim. Reply 6; see also Ex. 2004, 1 (claims 1, 2, 3, 4, 7, 12, 13, 14, 15,
`and 18 of the ’218 patent are asserted in the District Court Litigation).
`
`Specifically, while Patent Owneris correct that the first ground of the
`
`Petition has also been presented for consideration by the District Court, the
`
`second groundof the Petition which attacks claims 5, 6, 8-10, and 16-18 of
`the °218 patent as having been obvious over Bock, Woehrle, and Kiani, has
`
`not been asserted in the District Court. See, e.g., Ex. 2004, 17; Ex. 2007, 17.
`
`Further, as noted above, Petitioner has filed in the District Court
`
`“a stipulation that, if IPR is instituted, [Petitioner] will not pursuein the
`District Court Litigation any groundraised or that could have been
`
`reasonably raised in an IPR.” Prelim. Reply 6; Ex. 1038. Petitioner
`contends that, becauseofthis stipulation,“there will be no overlap of
`invalidity issues between the [District Court Litigation] and [this inter partes
`
`review].” Prelim. Reply 6 (emphasis added).
`
`Patent Ownercontendsthe stipulation is “unclear” as to whether
`
`Petitioner reserves the right to proceed based on other referencescited in the
`
`15
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`invalidity contentions in District Court. Prelim. Sur-reply 4. We disagree
`
`with Patent Owner’s contention here. The portion of the stipulation quoted
`
`by Patent Owner,states that the “stipulation is not intended. . . to limit
`
`[Petitioner’s] ability to assert invalidity of the asserted claims .
`
`.
`
`. on any
`
`other ground(i.e., invalidity under §§ 101, 112).” Ex. 1038, 7 (emphasis
`
`added). Petitioner’s stipulation also unequivocally states, however, that it
`
`“will not pursue in this case the specific grounds. . . [in] the instituted inter
`
`parties [sic] review petition, or on any other ground .
`
`.
`
`. that was raised or
`
`could have been reasonably raised in an IPR (i.e., any ground that could be
`
`raised under §§ 102 or 103 on the basis ofprior art patents or printed
`
`publications).” Id. at 6-7 (emphasis added).
`
`Petitioner’s stipulation here mitigates any concerns of duplicative
`
`efforts between the District Court and the Board, as well as concerns of
`
`potentially conflicting decisions. See Sand Revolution 12. Importantly,
`
`Petitioner broadly stipulates not to pursue “any groundraised or that could
`have been reasonablyraised.” Prelim. Reply 6 (emphasis added). As noted
`in Sand Revolution, such a broadstipulation better addresses concerns of
`
`duplicative efforts and potentially conflicting decisions in a much more
`
`substantial way than a stipulation limited to “the ‘same grounds’ presented”
`
`in both proceedings. Sand Revolution 12 n.5. Accordingly, Petitioner’s
`
`broad stipulation ensures an inter partes review is “a true alternative to
`
`litigation.” Id.
`Thus, we find this factor weighs strongly in favor of not exercising
`discretion to deny institution under 35 U.S.C. § 314(a).
`
`16
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`Factor 5:
`whetherthe petitioner and the defendantin the parallelproceeding
`are the same party
`
`Petitioner and Patent Owner acknowledgethe parties are the same in
`
`this inter partes review proceeding andin the District Court Litigation.
`
`Prelim. Resp. 18; Prelim. Reply 6-7. Thus, this factor supports denying
`
`institution. See Fintiv DI 15; Sand Revolution 12-13; cf, Fintiv Order 13-14
`
`(“If a petitioner is unrelated to a defendantin an earlier court proceeding, the
`
`Board has weighedthis fact against exercising discretion.”).
`
`Factor 6:
`other circumstances and considerations that impact the Board’s exercise of
`discretion, including the merits
`
`Asdiscussed below,on this preliminary record, Petitioner has metits
`
`burden of demonstrating a reasonable likelihood that it would prevail in
`showing that claims of the ’218 patent are unpatentable.° Although we
`
`recognize the record may changeduringtrial, as discussed in detail below,
`
`Petitioner has madea sufficiently persuasive showing, on the record
`
`presently before us, that the prior art references cited in the Petition teach or
`
`suggestall limitations of the challenged claims. See Fintiv Order 14—15
`
`(discussing the merits of the Petition as a consideration).
`
`Wedeterminethis factor does not weigh for or against denying
`
`institution in this case.
`
`® The parties include argumentsdirected to the merits of the asserted
`groundsin their discussions of Factor 6. See Prelim. Reply 7; Prelim.
`Sur-reply 5-7. We do notrely on these arguments in our determination
`below that Petitioner has presented a reasonable likelihood of success on the
`merits (see infra Sections IIT.B-F).
`
`17
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`Conclusion
`
`Wetake “a holistic view of whetherefficiency and integrity of the
`
`system are best served by denying or instituting review” when considering
`
`the six Fintiv factors. Fintiv Order 6. Ourholistic review of the Fintiv
`
`factors, namely that the timing of the Petition was reasonable,the relatively
`
`limited investmentin the District Court Litigation to date, and that there is
`
`minimalpotential overlap of the two proceedings, indicates the Fintiv factors
`
`weighin favorofinstituting inter partes review. As such, weare not
`
`persuadedthe interests of efficiency and integrity of the system would be
`
`best served by invoking our authority under 35 U.S.C. § 314(a) to deny
`
`institution of a meritorious Petition. For the reasons discussed above, we
`
`decline to deny institution under § 314(a).
`
`B.
`
`Claim Construction
`
`Weinterpret the ’218 patent claims “using the same claim
`
`construction standard that would be used to construe the claim inacivil
`
`action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). This
`
`“includ[es] construing the claim in accordance with the ordinary and
`
`customary meaning of such claim as understoodby oneofordinary skill in
`
`the art and the prosecution history pertaining to the patent.” Jd.
`
`Neither Petitioner nor Patent Owner proposes any express claim
`
`construction at this stage of the proceeding. See Pet. 10; Prelim. Resp. 12.
`
`However, after review of the assertions in the Petition and the Preliminary
`
`Response comparing claim 1 with Bock, we conclude two constructions of
`
`claim 1 are required, as follows.
`
`18
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`“at least one oxygen saturation value,”
`1.
`“the at least one oxygen saturation value,” and
`“the at leastfirst oxygen saturation value”’
`
`Claim 1 recites, in limitation 1(e), “at least one oxygen saturation
`
`value obtained overthe 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 offsetis
`
`diminished as a difference betweenthe at leastfirst oxygen saturation value
`
`and the lower limit diminishes.” Jd. at 14:16—30 (italicized and underlined
`
`emphases, added).
`
`Applying routine claim construction principles, the references in
`
`limitation 1(g) to “the” at least one oxygen saturation value would normally
`
`be construed to refer back to the sameat least one oxygen saturation value
`
`previously recited in limitation 1(e). See, e.g., Microprocessor
`
`Enhancement Corp. v. Texas Instruments Inc., 520 F.3d 1367, 1375
`
`(Fed. Cir. 2008) (agreeing with District Court’s “initial assumption”“that
`
`wherea subsequent use of a claim term makesreferenceto the first use as an
`
`antecedent by using ‘said’ or ‘the,’” the term “should be construed
`
`consistently with its appearance in other places in the same claim”); Process
`
`Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1356-57 (Fed.Cir.
`
`1999) (“It is clear from the language of the claim itself that the term ‘a
`
`discharge rate’ in clause [b] is referring to the samerate as the term ‘the
`
`discharge rate’ in clause [d].”).
`
`At the sametime,“the patentee’s mere use of a term with an
`
`antecedent doesnot require that both terms have the same meaning.”
`
`19
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`Microprocessor, 520 F.3d at 1375. For example, the claimsat issue in the
`
`Microprocessordecision recited “at least one condition code,” and then
`
`referred back to “said condition code”or “the condition code”five times.
`
`Id. at 1370-72, 1375. The District Court had held the claims were
`
`“insolubly ambiguous for requiring that [‘condition code’] be interpreted
`
`differently in different portions of a single claim.” Jd. at 1374, 1375. In
`
`particular, the District Court had concluded“the term ‘condition code’ must
`
`meaneither a storage unit or a value derivedfrom the output ofthe storage
`
`unit depending onthe context in whichits used, yet [the] claims arefacially
`
`nonsensicalifeither ofthese definitions is used exclusively.” Id. at 1375
`
`(emphases added). The Federal Circuit agreed with the District Court’s
`
`reading ofthe claims, but nonetheless reversed the holding of indefiniteness,
`
`because “the appropriate meaning of ‘condition code’ is readily apparent
`
`from each occurrence in context.” Id. at 1375—76 (emphasis added). We
`
`conclude, on the present preliminary record, that claim 1 should be
`
`construed in the same fashion as the claims in the Microprocessor decision.
`
`In limitation 1(e), the “at least one oxygen saturation value”refers to
`
`one value of the patient data generated by the sensor during the first period
`
`of time. Such patient data is shown, for example, in Figure 6 of the
`
`°218 patent at parameter segments 620 and 630, during respective time
`
`periodst; and t2, where each segmentincludesa transient desaturation
`
`event 624 or 634 below a baseline B. Ex. 1001, 3:24—30 (describing Fig.3),
`
`7:41-64 (describing Fig. 6). Limitation 1(e) correspondingly recites that
`
`whenonevalue of the generated patient data obtained duringa first time
`
`period t; ortz reflects a desaturation event that exceeds(i.e., falls below) the
`adaptive alarm threshold AT for that time period, the processor determines
`
`20
`
`
`
`IPR2020-01078
`Patent RE47,218 E
`
`whetheran alarm should betriggered. Jd. at 7:40—-8:6. Thus, in
`
`limitation 1(e), the “at least one oxygensaturation value”refers to patient
`
`data generated by the sensor duringthefirst period of time.
`
`In limitation 1(g), we first conclude the tworecitations of “the at least
`
`one oxygen satur
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
