[00:00:00] Speaker 02:
We have four argued cases this morning.

[00:00:03] Speaker 02:
Two of them are consolidated for purposes of argument.

[00:00:07] Speaker 02:
Those are number 21, 12, 29, Omni Med Science Inc.

[00:00:12] Speaker 02:
versus Apple Inc.

[00:00:13] Speaker 02:
and 21, 22, 13, Omni Med Science Inc.

[00:00:17] Speaker 02:
versus Apple Inc., Mr. Lurie.

[00:00:21] Speaker 03:
Good morning, Your Honors.

[00:00:22] Speaker 03:
Tom Lurie appearing for Omni Med Sac.

[00:00:26] Speaker 03:
There are a number of issues we've raised in the two different appeals.

[00:00:30] Speaker 03:
Many of them are in common.

[00:00:32] Speaker 03:
But one of the focus of this appeal is about a claim limitation that requires a light source or a system configured to increase the signal to noise ratio of an LED in response and therefore

[00:00:53] Speaker 03:
increase the signal-to-noise ratio by increasing the pulse rate of the LED.

[00:01:00] Speaker 03:
That's the focus of today's appeal.

[00:01:03] Speaker 03:
The case, or the prior art that's most common to all this is Lissagursky.

[00:01:12] Speaker 03:
The two grounds that Apple raised in the petition and the grounds that the board found

[00:01:20] Speaker 03:
made obvious that limitation were based on Lissagursky alone and Lissagursky combined with Carlson.

[00:01:27] Speaker 03:
And I want to focus on those grounds.

[00:01:30] Speaker 03:
And primarily on the Lissagursky alone side, I want to look at the board's error of law that led to a wrong conclusion.

[00:01:40] Speaker 03:
And that error of law was the board conflated the concepts of configured to with capable of.

[00:01:48] Speaker 02:
And this court has very clearly... So that was only in one of the two cases, right?

[00:01:53] Speaker 03:
No, it actually was in both cases.

[00:01:57] Speaker 03:
So in the 533 case, appendix page 30, the board said, an LED is configured to increase signal to noise by increasing the LED pulse rate when it is capable of doing so, even if it does so only some of the time.

[00:02:14] Speaker 03:
And it cites the Hewlett-Packard case.

[00:02:16] Speaker 03:
And then on appendix page 36 of the 299, it has very similar language.

[00:02:22] Speaker 03:
Lissinger's system is therefore configured to increase the signal to noise by increasing LED pulse rate, even if it does so only some of the time, citing Hewlett-Packard.

[00:02:33] Speaker 02:
OK, so I'm not understanding what your theory is.

[00:02:36] Speaker 02:
What's the difference in this context between configured and capable?

[00:02:41] Speaker 03:
Well, the court's

[00:02:42] Speaker 03:
made it very clear in Parker Vision, for example, that configured to is on one side of the line and capable of is on the other side of the line.

[00:02:51] Speaker 02:
Well, what difference does it make here?

[00:02:53] Speaker 02:
Are you suggesting that there's some requirement that it always do it?

[00:02:58] Speaker 03:
No, not that it always do it, but it has to be designed or programmed to do it.

[00:03:02] Speaker 03:
Apple says programmed.

[00:03:03] Speaker 03:
We say designed.

[00:03:04] Speaker 03:
But the system has to be designed to, in response to noise, when there's noise,

[00:03:10] Speaker 03:
It has to be designed to try to increase the signal to noise ratio by increasing the firing rate of the LED.

[00:03:18] Speaker 03:
If it doesn't have that design, then it isn't configured to.

[00:03:23] Speaker 03:
It's merely capable of it.

[00:03:24] Speaker 02:
It's a question of intent?

[00:03:26] Speaker 03:
It's not intent.

[00:03:27] Speaker 03:
It's the way the system is designed.

[00:03:30] Speaker 00:
And let me get this straight.

[00:03:33] Speaker 00:
I mean, in some ways, I look at the claim limitation as being self-defining when it says a light source configured to increase the signal to noise ratio by increasing the pulse rate.

[00:03:46] Speaker 00:
So it seems to me that the increasing the pulse rate is the configuring act that will cause the light source, the LED, to increase the signal to noise ratio.

[00:04:00] Speaker 00:
Is that a fair way of understanding the claim?

[00:04:02] Speaker 03:
I would say it's the how of.

[00:04:05] Speaker 03:
So what has to be configured is.

[00:04:06] Speaker 00:
And so I guess what I'm wondering is, what more is required from the claim than that?

[00:04:11] Speaker 00:
Because the claim itself says.

[00:04:12] Speaker 03:
A specific configuration.

[00:04:14] Speaker 00:
But I don't know what you mean by specific configuration.

[00:04:17] Speaker 00:
Because to me, it looks like the claim itself, the claim limitation itself, is saying when you increase the pulse rate,

[00:04:27] Speaker 00:
the LED will have a higher signal to noise ratio.

[00:04:31] Speaker 03:
Well, it doesn't say it will have, right?

[00:04:33] Speaker 03:
So that's one of the differences.

[00:04:35] Speaker 03:
Apple says we say always.

[00:04:36] Speaker 03:
Well, how about this?

[00:04:37] Speaker 03:
It's capable of.

[00:04:39] Speaker 03:
No, it's got to be configured to.

[00:04:42] Speaker 00:
Well, I understand that there's a difference between capable of and configured to in the most general sense in our case law.

[00:04:50] Speaker 00:
Because configured to, when we talk about it in some of our case law, not in holdings, but just in broad general discussions,

[00:04:58] Speaker 00:
We are talking about taking a device, a component, and somehow customizing it, somehow altering it, reconfiguring it, if you will, so that what that component couldn't do before it now can do, because it's been configured in some specific manner.

[00:05:16] Speaker 00:
Now, when I look at your patent specification, I don't see anything in the specification that suggests that you have taken an ordinary LED and you have somehow

[00:05:26] Speaker 00:
done anything structurally to it or certainly nothing that would be programming anything into it.

[00:05:34] Speaker 00:
It's otherwise just an LED that when you increase its pulse rate it's going to get this desired goal of improving the signal to noise ratio.

[00:05:44] Speaker 00:
So I don't see why under that circumstance in this particular patent configured to doesn't mean anything more than

[00:05:54] Speaker 00:
Are you increasing the pulse rate?

[00:05:56] Speaker 00:
And then if you are increasing the pulse rate, are you getting the increase in signal to noise ratio?

[00:06:02] Speaker 00:
What am I missing from my understanding of your patent?

[00:06:06] Speaker 03:
I would say it's not about the LED.

[00:06:09] Speaker 03:
It's about the system, in the case of the 299 patent, or about the light source more broadly.

[00:06:15] Speaker 03:
And we put it on our briefs, figure 20.

[00:06:17] Speaker 00:
But am I wrong in saying that there's nothing in the patent that suggests that your inventor has invented a new LED, that it has reconfigured an ordinary LED, it has structurally changed it, altered it, customized it?

[00:06:33] Speaker 03:
Again, it's not about the LED.

[00:06:34] Speaker 03:
What he did customize and configure was the part that goes around the LED.

[00:06:41] Speaker 03:
The LED is just the light, right?

[00:06:43] Speaker 03:
But there is what the patent calls an active illuminator.

[00:06:47] Speaker 03:
And the active illuminator is actually a whole series of parts that then controls how the LED functions.

[00:06:54] Speaker 00:
I saw that last minute reference to an illuminator in the patent specification, but I don't see it connected really to these claim limitations here about the light source configured to improve SNR by increasing the pulse rate.

[00:07:14] Speaker 00:
I mean, there's no discussion about increasing the pulse rate in that final paragraph about the illuminator.

[00:07:21] Speaker 03:
It doesn't expressly say increase the pulse rate.

[00:07:25] Speaker 03:
Now, there are parts.

[00:07:26] Speaker 03:
So in the summary of the invention, it does talk about increasing the pulse rate.

[00:07:30] Speaker 03:
But in the active illuminator section, and this is incorporated by reference material.

[00:07:35] Speaker 03:
It's most clearly stated, but it's also in the spec of the patent itself.

[00:07:39] Speaker 03:
It talks about the active illuminator.

[00:07:40] Speaker 03:
And it says, if there's signal to noise issue, you can increase the signal noise using an active illuminator.

[00:07:47] Speaker 03:
in the case of sunlight, or if there's variations in cloudiness and things like that.

[00:07:53] Speaker 00:
We're running out of time here.

[00:07:55] Speaker 00:
Let's assume for the moment that we don't understand the claim limitation in the same way as you, and we understand it as simply there's no subjective intent element.

[00:08:09] Speaker 00:
And as long as a prior art

[00:08:14] Speaker 00:
light source or it accused infringing light source is When you increase its pulse rate you it yields an increase in SNR then it would meet the limitation so what else is the Prior teaches increasing the pulse rate right it actually doesn't and let me explain why I've got figure 8b here and and this is Lissinger ski and this is an illustration of how it works so

[00:08:44] Speaker 03:
This is the PPG signal on top, the heart rate.

[00:08:47] Speaker 03:
And what Lissagersky says is that one way to make sure you're finding the peaks and valleys of the heart rate is to pulse the LED on the peaks or the valleys.

[00:08:59] Speaker 03:
So that's what it does at the bottom here.

[00:09:00] Speaker 03:
And the way it does that is it has this signal on top.

[00:09:04] Speaker 03:
It's two LEDs.

[00:09:05] Speaker 03:
One LED is always on looking for the peaks and valleys.

[00:09:07] Speaker 02:
Well, that's one thing it teaches.

[00:09:09] Speaker 02:
But the board found that it also teaches increasing the pulse rate, right?

[00:09:14] Speaker 03:
So what it does is to match the heart rate.

[00:09:21] Speaker 03:
So if the heart rate changes, then the pulses for the CCM, cardiac cycle modulation, will also follow the change in heart rate.

[00:09:32] Speaker 03:
So there will be an increase in the

[00:09:36] Speaker 03:
in the pulse rate for that scenario.

[00:09:39] Speaker 03:
But what it doesn't do is it doesn't react to noise by increasing the firing rate to increase SNR.

[00:09:46] Speaker 03:
If it did that, these pulses would be closer together.

[00:09:49] Speaker 03:
They would no longer line up with the heart rate.

[00:09:51] Speaker 00:
My understanding is, though, that the board in both of these appeals relied on what it saw as an admission in the patent owner response about how

[00:10:00] Speaker 00:
you would acknowledge that in Leszegerski that it increases SNR in multiple different ways and one of them is by modulating the light stick signal in accordance with the cardiac cycle.

[00:10:18] Speaker 00:
Correct.

[00:10:19] Speaker 00:
And so therefore once the board had that information in front of it, it understood that

[00:10:27] Speaker 00:
When the heart rate rises, the pulse rate is necessarily going to rise with that.

[00:10:32] Speaker 00:
And then now we have what looks like your claim limitation about improving signal to noise ratio by increasing the pulse rate.

[00:10:41] Speaker 03:
But that's what there's no evidence of.

[00:10:43] Speaker 03:
There's no evidence that in that fact, what you just said, increases the signal-to-noise ratio.

[00:10:49] Speaker 00:
All we have is speculation.

[00:10:51] Speaker 00:
What about the admission that Lissa Gursky teaches multiple different ways of improving SNR?

[00:10:58] Speaker 03:
Yes.

[00:10:58] Speaker 03:
And it teaches specifically four ways of doing that, none of which are increase the pulse rate of the LED.

[00:11:05] Speaker 03:
And it's because if you did that, if you increased the pulse rate of the LED, you would go off the heart rate.

[00:11:13] Speaker 02:
OK, but quite apart from the cardiac embodiment, the board found alternatively that the combination of Lissagersky and Carlson shows increasing the pulse rate to 5,000 hertz for the stated purpose of improving the signal-to-noise ratio, right?

[00:11:34] Speaker 02:
What's wrong with that?

[00:11:35] Speaker 03:
Well, there, there's no increase in the pulse rate.

[00:11:39] Speaker 02:
From 0 to 5,000?

[00:11:40] Speaker 03:
No, no.

[00:11:43] Speaker 03:
So actually, the concurrence said that.

[00:11:47] Speaker 03:
The board implicitly rejected that.

[00:11:50] Speaker 03:
There's no pulses at, quote unquote, zero hertz.

[00:11:54] Speaker 03:
It's not pulsing.

[00:11:55] Speaker 03:
So it's a non-existent pulse rate.

[00:11:58] Speaker 03:
You can't say there's a pulse rate for something that doesn't pulse.

[00:12:00] Speaker 02:
Your theory is that our pulse shows it's starting to pulse.

[00:12:02] Speaker 02:
It doesn't show increasing pulse, right?

[00:12:04] Speaker 02:
No.

[00:12:04] Speaker 02:
It's on or off.

[00:12:05] Speaker 02:
That's your theory.

[00:12:06] Speaker 03:
It's on or off.

[00:12:07] Speaker 03:
There's no increase.

[00:12:09] Speaker 03:
And the Lise-Gursky, let me tell you why we think the combination the board made is incorrect, because they didn't give a reason to make this combination.

[00:12:21] Speaker 03:
So Lise-Gursky, this line I have here in figure 8B, that's normally always on.

[00:12:27] Speaker 03:
But Lise-Gursky says, if there's noise, what you can do is you can go from always on to pulsing at 1,000 hertz.

[00:12:34] Speaker 03:
So noise.

[00:12:35] Speaker 03:
You want to solve noise problem, you can pulse this always on LED at 1,000 hertz.

[00:12:40] Speaker 03:
That's exactly the same thing Carlson says.

[00:12:43] Speaker 03:
No different.

[00:12:43] Speaker 03:
Carlson says LED is always on.

[00:12:45] Speaker 00:
That's the DCM mode.

[00:12:47] Speaker 00:
That's the DCM mode, right.

[00:12:48] Speaker 00:
Right.

[00:12:48] Speaker 00:
And then, but Mr. Gursky says you can have the DCM mode going on at the same time as another mode.

[00:12:55] Speaker 03:
It's CCM, right.

[00:12:56] Speaker 03:
Sorry, cycle modulation.

[00:12:58] Speaker 03:
So the top LED would be flashing at 1,000 hertz.

[00:13:01] Speaker 00:
The trouble we have here is that

[00:13:03] Speaker 00:
You know, we're an appeals court.

[00:13:05] Speaker 00:
And I feel like what's happening here is an attempt to relitigate all these fact findings about how these references operate or don't operate.

[00:13:15] Speaker 00:
And we have to defer to the board's fact findings, ultimately.

[00:13:19] Speaker 00:
And if the board found that Lissagursky does talk about moving into a second mode to deal with background noise, and Lissagursky would have

[00:13:32] Speaker 00:
already be at a very low frequency in CCM mode.

[00:13:38] Speaker 00:
And then if you combine Carlson's teaching of, oh, when you're dealing with a lot of background environmental noise, you should yank your pulse rate up to 1,000 hertz.

[00:13:51] Speaker 00:
And then when Lissagursky already talks about exiting CCM to a second mode, why wouldn't that be obvious then to just

[00:14:01] Speaker 00:
have the second mode of Lissagursky be operating at 1,000 hertz pulse rate?

[00:14:07] Speaker 03:
The reason is because there's no reason an ordinary artisan would effectively throw away Lissagursky's teaching of DCM, which is identical to Carlson's teaching, right?

[00:14:20] Speaker 03:
So you've got Swiker, you've got NTP, those cases say where there's

[00:14:25] Speaker 03:
where the first reference already has the feature, you have to give some reason to get rid of it, and it's working, get rid of it, and put in place of it the same feature from another reference.

[00:14:37] Speaker 03:
And that's exactly what the board did.

[00:14:39] Speaker 02:
So if we were to conclude that the board was correct about the motivation to combine, you agree that the combination shows the patented limitation?

[00:14:48] Speaker 03:
No, because the second problem is

[00:14:50] Speaker 03:
it changes the principle of operation of Lissagursky.

[00:14:53] Speaker 02:
OK, put that aside.

[00:14:55] Speaker 02:
We say there's a motivation.

[00:14:57] Speaker 02:
There's no problem about changing the principle of operation.

[00:15:00] Speaker 02:
The combination shows the limitation, right?

[00:15:03] Speaker 03:
Well, if there's a reason to do it, and it's not changing the principle of operation, then the board made a combination.

[00:15:13] Speaker 03:
And it does what the claim requires.

[00:15:15] Speaker 03:
I don't disagree with that.

[00:15:17] Speaker 03:
The other two fundamental problems are they didn't give a reason why you would get rid of DCM.

[00:15:23] Speaker 03:
And I see my red lights on, but.

[00:15:25] Speaker 02:
OK.

[00:15:25] Speaker 02:
Well, unless Chief Judge Moore has any questions, Gary Noonan.

[00:15:34] Speaker 02:
Thank you, Mr. Moore.

[00:15:35] Speaker 02:
We'll give you two minutes.

[00:15:36] Speaker 02:
Mr. Cushing?

[00:15:38] Speaker 01:
Cushing for Apple.

[00:15:39] Speaker 01:
Judge Chen, toward the end of your remarks, you made a good observation that this is not the place to relitigate all of the factual disputes ever before the board.

[00:15:48] Speaker 01:
And really, that's what this case is about.

[00:15:55] Speaker 01:
Sorry about that.

[00:15:56] Speaker 00:
Could you just go to the opposing counsel's last point about DCM mode and respond to their theory about why it doesn't make any sense to make this particular combination in light of the DCM mode already operating in 1000 hertz?

[00:16:17] Speaker 01:
So the short answer is that

[00:16:19] Speaker 01:
Before the board, they did not dispute that a person of skill would have combined the teachings of Lissaker, Gershkin, and Carlson.

[00:16:28] Speaker 01:
In the OmnI decision at appendix 24 to 25, the board made a finding that the two references teach complementary designs and techniques in analogous systems, including techniques for achieving the same objectives of increasing SNR in the presence of environmental noise, such as ambient light or sunlight.

[00:16:49] Speaker 01:
And as the board points out, Omni did not dispute these findings.

[00:16:53] Speaker 01:
This theory that they're advancing now is trying to reverse that determination by the board that a person would have combined the teachings of the two references.

[00:17:03] Speaker 01:
He's also suggested that the teachings are essentially superfluous.

[00:17:09] Speaker 01:
There's no difference in the teachings between the two references.

[00:17:12] Speaker 01:
And I think here it's important to appreciate that two things.

[00:17:16] Speaker 01:
For the combination of Lissagruzsky and Carlson,

[00:17:20] Speaker 01:
And contrary to what Mr. Lurie said, that determination does not depend on you affirming the PTAB's claim construction.

[00:17:31] Speaker 01:
In both cases, that finding was something we flagged in our briefs as not dependent on that claim construction determination, and they have not disputed that.

[00:17:43] Speaker 01:
And what that tells you is that you can address that issue based on the standard of substantial evidence and conclude, as you should, that it does teach the combination.

[00:17:53] Speaker 01:
Now, the thing that's particularly important about the combination is that what Carlson is adding to Lissingersky is the reason why you should increase the LED pulse rate.

[00:18:07] Speaker 01:
in their challenge to Lissagrisky alone, that's what they say is missing.

[00:18:12] Speaker 01:
The reason why you should increase the pulse rate is to increase the SNR.

[00:18:17] Speaker 01:
And that's exactly what the board found was being provided, that teaching to increase the pulse rate, to go to that high-frequency LED pulse rate

[00:18:25] Speaker 01:
in order to increase the SNR and thereby overcome ambient noise.

[00:18:30] Speaker 01:
And the findings are laid out very concisely by the panel.

[00:18:33] Speaker 00:
Right.

[00:18:34] Speaker 00:
But my question is, just following up on what your opposing counsel said, his argument is,

[00:18:40] Speaker 00:
There already is this DCM mode operating at 1,000 hertz in Lissagersky that is dealing with environmental noise.

[00:18:51] Speaker 00:
So why would one still be motivated to change Lissagersky to exit from CCM at the same time and yank that pulse rate up to 1,000 hertz?

[00:19:07] Speaker 01:
because Lissagersky identifies a variety of ways of dealing with ambient noise when it encounters it.

[00:19:14] Speaker 01:
And so you can alter several of the parameters of the pulse rate.

[00:19:18] Speaker 01:
They've challenged that Lissinger-Sky taught when it does alter its behavior going to a high frequency pulse rate to solve that problem.

[00:19:26] Speaker 01:
That's what their challenge to Lissinger-Sky's teaching was.

[00:19:30] Speaker 01:
And so in the combination with Carlson, Carlson is coming in and providing that reason to change the pulse rate to a high frequency rate in order to increase the signal-to-noise ratio.

[00:19:42] Speaker 01:
And that's also why this theory of superfluous teachings is incorrect, because

[00:19:48] Speaker 01:
Lissingerky, according to them, is not teaching that solution to the problem of noise when it's operating in that low frequency cardiac cycle modulation mode.

[00:20:00] Speaker 01:
And that's why this board's decision disposes of the issues.

[00:20:04] Speaker 01:
The board saw that the Lissagersky device operates in a low frequency mode in CCM.

[00:20:11] Speaker 01:
It teaches that when it encounters ambient noise, it switches to a second mode.

[00:20:16] Speaker 01:
It lists a variety of options for how it might deal with that increased noise.

[00:20:21] Speaker 01:
And now Carlson comes in and provides a specific idea of solving that problem of ambient noise by increasing the LED pulse rate and thereby yields the increased signal to noise ratio.

[00:20:33] Speaker 01:
Now, I'd like to touch on a couple of points on the claim destruction arguments that we've heard.

[00:20:39] Speaker 01:
And I think the discussion that you went through with Mr. Lurie identifies exactly what the board saw, which is there's nothing there in the specification in the claim language besides the LEDs.

[00:20:53] Speaker 01:
The LEDs are passive devices.

[00:20:56] Speaker 01:
They are capable of being pulsed in different ways.

[00:21:01] Speaker 01:
in front of the board, the board really strained to get Omni to identify where in the specification it described a specific configuration or this technique of responding to noise and then doing something to alter the pulse rate.

[00:21:17] Speaker 01:
And the only thing that Omni identified was this active illuminator section.

[00:21:22] Speaker 01:
Now, what's particularly probative about that conversation is, and this is also in the oral hearing, is that the active illuminator

[00:21:31] Speaker 01:
section lists a few ways of increasing the signal-to-noise ratio.

[00:21:37] Speaker 01:
None of them are by responding to light and changing the pulse rate to increase it to overcome the signal-to-noise ratio.

[00:21:46] Speaker 02:
This is all seems to me a bit confusing.

[00:21:50] Speaker 02:
Basically, it's configured to meet the claim limitation because it established its program so that in response to noise, it increases the pulse rate.

[00:22:03] Speaker 02:
And that's what the combination produces, produces that configuration, right?

[00:22:09] Speaker 01:
I don't think that's quite accurate for this case.

[00:22:11] Speaker 01:
What the issue here is, and if you look at the briefing, they're basically... What's inaccurate about what I said?

[00:22:18] Speaker 01:
There's nothing in the claim language that has some component that does that.

[00:22:23] Speaker 01:
There's nothing in the specification that shows doing that.

[00:22:27] Speaker 01:
And so the only thing that we're really fighting about is whether configure to, just by those two words alone, cause or create a configuration.

[00:22:35] Speaker 02:
But if you interpret the claim as requiring the respond,

[00:22:38] Speaker 02:
to a noise problem by increasing the pulse rate, that would be what the program is.

[00:22:43] Speaker 01:
Well, the board found no language that suggests that the claim requires a response to noise and then taking action.

[00:22:50] Speaker 01:
All it says is... Well, that's what they're arguing is that's what the claim requires.

[00:22:55] Speaker 01:
And he tried to convince the board of that as well and he did not succeed.

[00:22:59] Speaker 01:
The board did not find a basis for reading the claim the way he proposed it.

[00:23:03] Speaker 01:
And I think what this case boils down to is that he's taken the position that the words configured to by themselves create this special.

[00:23:10] Speaker 02:
I mean, I thought the whole point of bringing in Carlson is it shows increasing the pulse rate to deal, or using a high pulse rate to deal with a noise problem, being responsive to the existence of noise.

[00:23:25] Speaker 02:
So the theory is if that is part of the claim, the combination of Carlson and Litigarski does that.

[00:23:31] Speaker 01:
That is absolutely correct.

[00:23:33] Speaker 01:
And that's why we add that as an alternative ground.

[00:23:37] Speaker 00:
So just to be clear, then.

[00:23:40] Speaker 00:
your view that if we agree with Omni's understanding of the claim limitation, that it doesn't make a difference with respect to the Lissagursky-Carlson combination.

[00:23:52] Speaker 00:
Correct.

[00:23:53] Speaker 00:
It would make a difference with the Lissagursky alone theory for meaningful limitation.

[00:23:59] Speaker 01:
Well, I think we would dispute that as well, because the only thing that you end up with in their construction is an intent of a device

[00:24:07] Speaker 01:
And we've seen cases where intent doesn't get counted.

[00:24:11] Speaker 00:
Maybe not intent, but this whole response conception that Judge Dyck is exploring with you, the idea that in response to increased noise, in order to get the signal-to-noise ratio to be at an acceptable level, then you increase the pulse rate.

[00:24:32] Speaker 01:
I would submit that that was the alone doesn't quite have that idea Lissa Gerstein alone well that's an interesting question because one of the things you'll see in the briefing is a little bit of vacillation about what Liskers he says about why it's increasing the pulse rate if you look in there it's increasing the pulse rate to match the heart rate

[00:24:52] Speaker 00:
So if the heart rate happens to go up, then your pulse rate will get increased.

[00:24:57] Speaker 02:
You're relying on their admission, which seems to suggest that that's what Ludegersky does with the increase in the pulse rate in the cardiac situation.

[00:25:10] Speaker 01:
The admission was one thing in front of the board that they relied on.

[00:25:14] Speaker 01:
There was additional evidence.

[00:25:15] Speaker 01:
The board looked at a passage.

[00:25:18] Speaker 01:
in the list of grocery description and basically confirm that the signal's noise was increasing in the CCM mode.

[00:25:26] Speaker 01:
We also advance evidence.

[00:25:27] Speaker 02:
Well, that's not responsive to this notion that it has to do it in response to a noise problem.

[00:25:34] Speaker 02:
But the admission does seem to cover that.

[00:25:37] Speaker 01:
Well, I think one of the things that's challenging about reading their claim is having this additional requirement.

[00:25:43] Speaker 01:
We have a full body of case law where the court has found it improper to read a limitation into the claim from an example in the specification.

[00:25:52] Speaker 01:
Here, you have a situation where the board found no example, but that somehow would still read that example's requirements into the claim language.

[00:26:00] Speaker 01:
I don't think the board saw any rationale for permitting that.

[00:26:04] Speaker 01:
They looked at the claim language.

[00:26:06] Speaker 01:
In the Omni 1 case, the thing that the claim identified was an LED, a plurality of LEDs.

[00:26:11] Speaker 01:
That was the only structure it identified.

[00:26:14] Speaker 01:
And then it had the outcome of doing something to that structure.

[00:26:19] Speaker 01:
That led to the conclusion that it is capable, in that case, of achieving the SNR.

[00:26:27] Speaker 01:
And we should also be clear that Omni has made absolutely clear statements that when the device is in operation, it does not necessarily increase the signal-to-noise ratio.

[00:26:40] Speaker 01:
And that makes this case fit precisely into the Hewlett-Packard type of rationale.

[00:26:45] Speaker 01:
So if you take the board's finding that in the cardiac cycle mode, sometimes it increases the SNR by increasing the LED pulse rate, it's not a matter of can you configure it to do it possibly.

[00:26:58] Speaker 01:
They found it does increase the signals noise ratio by increasing the LED pulse rate under Hewlett-Packard.

[00:27:05] Speaker 01:
That is sufficient to meet the requirement for a claim of that nature.

[00:27:09] Speaker 01:
In the Omni-2 case, the claim focused on the system as a whole.

[00:27:14] Speaker 01:
And there, there's really no dispute.

[00:27:15] Speaker 01:
There's no fight about this, because there's no question Lisigurski and Carlson both described systems that have something in them that do this, that increase the pulse rate to increase the signal-to-noise ratio.

[00:27:27] Speaker 00:
I find the law very confusing on the question of when does a prior art reference have to meet the claim limitation all the time versus some of the times.

[00:27:38] Speaker 00:
And I see, to your benefit, you're leaning on the arm of case law that says, if the prior meets the limitation some of the time, that's good enough for this claim.

[00:27:52] Speaker 00:
But it's less than clear to me that that is the case in this facts here, when we do have a claim, after all, that says a light source or system configured to increase the signal to noise ratio by increasing the pulse rate.

[00:28:08] Speaker 02:
Well, I think what you see... It seems to me it's not an absurd construction of this claim to suggest that it's dealing with a situation where in response to a noise problem, an interference problem, and a desire to increase the signal-to-noise ratio, you increase the pulse rate.

[00:28:25] Speaker 02:
I mean, it's not an unsupported notion of how to construe the claim.

[00:28:33] Speaker 01:
Well, Your Honor, I think the question is, does this claim, by its language or by the description of this element in the specification, describe a configuration that does that?

[00:28:46] Speaker 01:
And this goes to your question, Judge Chen.

[00:28:48] Speaker 01:
The cases are not asking what configure to in the abstract means.

[00:28:53] Speaker 01:
They're asking, what does a claim term require?

[00:28:56] Speaker 01:
What does a claim term define?

[00:28:58] Speaker 01:
And then the role of words like adapted to or configured to with the rest of the claim language and the specification is being evaluated.

[00:29:08] Speaker 01:
The upshot of all these cases is, is there a configuration?

[00:29:12] Speaker 01:
Is there a specific device?

[00:29:14] Speaker 01:
Is there some requirement that things be done beyond what's listed in the claim that cause the result?

[00:29:24] Speaker 01:
And if the result, and so that's one part of the confusion, is that the cases don't just look at it configured to in isolation.

[00:29:32] Speaker 01:
They look to see if it is defining a configuration.

[00:29:34] Speaker 02:
OK, but their argument is that accidentally performing the thing is not sufficient.

[00:29:40] Speaker 02:
The device has to be programmed.

[00:29:43] Speaker 02:
to increase the signal-to-noise ratio as a result of an increased pulse rate when a noise problem is detected.

[00:29:51] Speaker 02:
You don't agree with that, but your alternative theory, as I understand it, is that that's, in fact, what the combination of Litigarsky and Carlson does show.

[00:30:02] Speaker 01:
You don't say that?

[00:30:04] Speaker 01:
Well, I want to home in on one point of what you said.

[00:30:08] Speaker 01:
our position and the record shows that the board found that it doesn't, it's not a possibility, it does happen in the CCM mode.

[00:30:17] Speaker 01:
The pulse rate increases.

[00:30:18] Speaker 01:
So this is the case that is defined by Hewlett Packard, which says if you have a device and some of the times in its operation it does achieve the result, then it satisfies the claim limitation.

[00:30:31] Speaker 02:
This is not the case.

[00:30:34] Speaker 02:
Under their construction,

[00:30:35] Speaker 02:
the increase in the pulse rate has to be responsive to a noise problem.

[00:30:40] Speaker 02:
But is not your alternative theory that the combination of Litigursky and Carlson does that?

[00:30:47] Speaker 01:
Yes.

[00:30:47] Speaker 01:
So the second point, yes.

[00:30:49] Speaker 01:
I don't think so.

[00:30:49] Speaker 01:
First point, and again, we don't agree, and I don't think the board agreed with them either, that there is that element that's missing that yields that result or causes that result.

[00:31:00] Speaker 00:
If we were to affirm

[00:31:04] Speaker 00:
the Lissner-Gursky-Carlson combination, but not adopt the board's construction because maybe we prefer the construction that Judge Dyke has been hypothesizing about.

[00:31:21] Speaker 00:
Is that going to impact any parallel litigation?

[00:31:26] Speaker 01:
There is a third IPR proceeding pending right now.

[00:31:31] Speaker 01:
And the case of the district court litigation is state pending the disposition of the IPRs.

[00:31:38] Speaker 01:
So I would have to take a closer look at the claim language to see if it maps over to the issues we're dealing with here.

[00:31:45] Speaker 01:
But right now, these two cases are linked pretty closely on the issues we've talked about.

[00:31:53] Speaker 02:
OK.

[00:31:54] Speaker 02:
Unless Chief DeFore has any questions, I think that's it for Mr. Fitch.

[00:32:03] Speaker 02:
OK, Mr. Lurie, you have to now.

[00:32:06] Speaker 03:
To answer Judge Chen's last question, we have to win both.

[00:32:12] Speaker 03:
If we don't win both, then the effect is the same as if we just win one.

[00:32:18] Speaker 00:
Well, for purposes of this case, of course, I understand.

[00:32:21] Speaker 03:
I'm talking about any other follow-on cases.

[00:32:23] Speaker 03:
At least the ones that have been, the other IPR has the same issues.

[00:32:29] Speaker 03:
There are some dependent claims that don't apply, but they have nothing to do with this.

[00:32:33] Speaker 03:
But let me address a couple of different points.

[00:32:36] Speaker 03:
On the Lissinger-Sky-Carlson combination, Apple's counsel said that we didn't dispute the combination that they made.

[00:32:47] Speaker 03:
And writ large, the fact that these two references are similar and have some ability to be combined, we don't dispute that.

[00:32:54] Speaker 03:
But what we did dispute was the specific combination the board tried to make.

[00:32:59] Speaker 03:
And that's, for example, the Schweikart case that we cited, which is a non-precedential case.

[00:33:05] Speaker 03:
The NTP case is presidential.

[00:33:07] Speaker 03:
But in Schweikart, there were two references.

[00:33:10] Speaker 03:
They were basically the same exact thing as the Lissagursky-Carlson here, in the sense that they were very similar references.

[00:33:18] Speaker 03:
But what the board had done was take a piece of the first reference

[00:33:24] Speaker 03:
taken it out, and put in a piece from the second reference.

[00:33:27] Speaker 03:
And the court said, well, you can't do that where the pieces are the same.

[00:33:31] Speaker 03:
And here we get the exact same two pieces.

[00:33:33] Speaker 03:
You have to have a reason.

[00:33:34] Speaker 03:
It's not that you can't do it, but you have to give a reason to do that specific combination.

[00:33:39] Speaker 03:
And that's what we're arguing.

[00:33:40] Speaker 03:
But the board didn't give a reason for the specific combination of taking the 1,000 Hertz DCM that does exactly what Carlson does.

[00:33:49] Speaker 03:
And it's column six of Liz Gershkis, he says,

[00:33:52] Speaker 03:
If there's noise, we can use drive cycle modulation at 1,000 hertz.

[00:33:56] Speaker 03:
That's exactly what Carlson says.

[00:33:58] Speaker 03:
And Carlson does not say increase the pulse rate.

[00:34:00] Speaker 03:
He said the thing missing from Lissagersky was the reason to increase the pulse rate.

[00:34:07] Speaker 03:
But Carlson doesn't increase the pulse rate.

[00:34:09] Speaker 03:
In fact, the board declined to make that finding, said it wasn't necessary to make that finding, that there's an increase in pulse rate in Carlson.

[00:34:18] Speaker 03:
So the things that they need to make the Carlson-Lissagursky combination don't exist.

[00:34:23] Speaker 02:
OK, you're out of time.

[00:34:24] Speaker 02:
Yes, thank you.

[00:34:25] Speaker 02:
Thank you, Mr. Lurie.

[00:34:25] Speaker 02:
Thank you, Mr. Fishman.

[00:34:27] Speaker 02:
The pieces are submitted.