Sotera Wireless, Inc. v. Masimo Corporation

Trials@uspto.gov 	Paper 12
571-272-7822 	Date: December 1, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
SOTERA WIRELESS, INC.,
Petitioner,
v.
MASIMO CORPORATION,
Patent Owner.
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Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
AMANDA F. WIEKER, Administrative Patent Judges.
CHAGNON, Administrative Patent Judge.
DECISION
Granting Institution of Inter Partes Review
35 U.S.C. § 314, 37 C.F.R. § 42.4

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I. 	INTRODUCTION
Sotera Wireless, Inc. (“Petitioner”)1 filed a Petition requesting inter
partes review of claims 1–25 (“the challenged claims”) of U.S. Patent No.
RE47,353 E (Ex. 1001, “the RE353 patent”). Paper 1 (“Pet.”). Masimo
Corporation (“Patent Owner”) filed a Preliminary Response. Paper 6
(“Prelim. Resp.”). We authorized additional briefing for the parties to
address the factors laid out in our precedential Order in Apple, Inc. v. Fintiv,
Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential)
(“Fintiv Order”) regarding the exercise of our discretion under 35 U.S.C.
§ 314(a). Paper 7. Petitioner filed a Reply (Paper 10) and Patent Owner, in
turn, filed a Sur-reply (Paper 11).
We have authority to determine whether to institute an inter partes
review under 35 U.S.C. § 314, which provides that an inter partes review
may be instituted only upon a showing that “there is a reasonable likelihood
that the petitioner would prevail with respect to at least 1 of the claims
challenged in the petition.” 35 U.S.C. § 314(a) (2018). After considering
the Petition, the Preliminary Response, and the evidence of record, we
determine that Petitioner has demonstrated a reasonable likelihood of
prevailing with respect to at least one claim challenged in the Petition.
Accordingly, we institute an inter partes review of all challenged claims of
the RE353 patent, based on all grounds identified in the Petition.
1 Petitioner identifies Sotera Wireless, Inc. and Hon Hai Precision Industry
Co., Ltd. (“Hon Hai”) as real parties-in-interest to this proceeding. Pet. 1.
Petitioner states that Hon Hai is named as a real party-in-interest due to its
involvement in a related proceeding. Id.

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The following findings of fact and conclusions of law are not final,
but are made for the sole purpose of determining whether Petitioner meets
the threshold for initiating review. Any final decision shall be based on the
full trial record, including any response timely filed by Patent Owner. Any
arguments not raised by Patent Owner in a timely-filed response may be
deemed waived, even if they were presented in the Preliminary Response.
A. 	Related Proceedings
The parties identify Masimo Corp. v. Sotera Wireless, Inc., Case No.
3:19-cv-01100-BAS-NLS (S.D. Cal.) (the “parallel proceeding”) as a related
matter involving the RE353 patent. Pet. 2; Paper 4, 1.
Patent Owner identifies the following inter partes proceedings
involving patents related to the RE353 patent and asserted in the parallel
proceeding:
IPR2020-00912, challenging U.S. Patent No. 10,213,108 B2;
IPR2020-00954, challenging U.S. Patent No. 9,788,735 B2;
IPR2020-00967, challenging U.S. Patent No. RE47,244 E;
IPR2020-01015, challenging U.S. Patent No. 9,795,300 B2;
IPR2020-01033, challenging U.S. Patent No. RE47,249 E;
IPR2020-01054, challenging U.S. Patent No. 9,872,623 B2;
IPR2020-01078, challenging U.S. Patent No. RE47,218 E; and
IPR2020-01082, challenging U.S. Patent No. 10,255,994 B2.
Paper 4, 2. Patent Owner further identifies various applications that share a
priority claim with the RE353 patent.

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B. 	The RE353 Patent
The RE353 patent, titled “Alarm Suspend System,” was filed May 1,
2017, and issued on April 16, 2019. Ex. 1001 codes (22), (45), (54). The
RE353 patent was filed as a reissue application of U.S. Patent No. 9,153,121
(“the ’121 patent). Id. at code (64).2 The RE353 patent describes a
physiological measurement system that utilizes an alarm suspend system.
Id. at 4:25–26. The alarm suspend system prevents unnecessary
disturbances to patients and distractions to caregivers. Id. at 2:33–36. “The
alarm suspend period is typically long enough to give a caregiver sufficient
time to intervene with appropriate patient treatment yet short enough to
ensure that patient health is not endangered if intervention is ineffective.”
Id. at 2:38–42.
The physiological measurement system includes a noninvasive sensor
connected to a physiological monitor. Id. at 4:25–30. The physiological
measurement system incorporates “pulse oximetry in addition to advanced
features, such as a multiple wavelength sensor and advanced processes for
determining physiological parameters other than or in addition to those of
pulse oximetry, such as carboxyhemoglobin, methemoglobin and total
hemoglobin, as a few examples.” Id. at 4:30–36. The monitor includes
controls, such as “an alarm silence button [] that is pressed to temporarily
suspend out-of-limit parameter alarms and system alarms, such as low
battery.” Id. at 4:46–48. “Advantageously, an alarm suspend system
2 The RE353 patent claims earliest priority through a series of continuation
applications to Provisional application No. 61/084,615, filed on July 29,
2008. Ex. 1001, codes (60), (63). The specific priority date of the
challenged claims is not at issue in this proceeding, and we need not make
any determination in this regard for purposes of this Decision.

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provides a parameter-dependent variation in the alarm suspend duration, as
described below, utilizing a common silence button or other suspend
initiator.” Id. at 4:60–63.
Figure 3 of the RE353 patent, reproduced below, illustrates a flow
diagram of an alarm suspend system. Id. at 4:16–17.
As shown in Figure 3, above, “[a]larm triggers include system failures 338
and out-of-limit parameters 318.” Id. at 5:43–44. Out-of-limit parameters
are identified by comparing measured parameters 312 to default or
user-specified limits 314. Id. at 5:51–52. Out-of-limit condition 318
triggers alarm 340 that can be suspended 328 by user-initiated silence
request 322. Id. at 5:52–56. Suspend durations may vary depending on the
parameter. Id. at 6:23–28. For example, “relatively slow treatment
parameters, such as [methemoglobin (‘HbMet’)], [carboxyhemo-
globin (‘HbCO’)], [total haemoglobin (‘Hbt’) and [Pleth Variability Index

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(‘PVi’)], are assigned relatively long suspend durations. Similarly,
relatively fast treatment parameters, such as [oxygen saturation (‘SpO2 ’)]
and [pulse rate (‘PR’)], are assigned relatively short suspend durations.” Id.
at 6:28–33.
Figure 4, reproduced below, illustrates an alarm suspend “that
operates independently for each measured parameter that can trigger an
alarm.” Id. at 5:66–6:1.

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As shown in Figure 4, above, the system triggers alarm 420 when a
parameter is measured outside its set limit 414 (i.e., it is “out-of-limit”). Id.
at 6:1–4. A user may activate silence request 422 that suspends alarm 430
for predetermined duration 432. Id. at 6:5–10. The predetermined duration
“may be a function of the out-of-limit parameter.” Id. at 5:60–61. When the
predetermined duration expires, the alarm is activated until the triggering
parameter is within limit 424 or the user again requests silence 422. Id. at
6:13–15. Alarm “suspend 430 deactivates if the measured parameter
becomes within limits 438, such as when the patient condition improves, or
if no physiological data is detected 439.” Id. at 6:15–18. Alternatively,
alarm suspend override 436 reactivates alarm 420 when a measured
parameter changes by a sufficient out-of-limit amount. Id. at 6:20–23.
C. 	Illustrative Claim
Of the challenged claims, claims 1, 13, and 18 are independent.
Claims 2–12 and 23–25 depend from claim 1; claims 14–17 depend from
claim 13, and claims 19–22 depend from claim 18. Independent claim 1 of
the RE353 patent is reproduced below, and is illustrative of the challenged
claims.3
3 The RE353 patent is a reissue patent. As is standard when printing the
claims of a reissue patent, matter enclosed in heavy brackets [ ] was deleted
from the original claims and matter printed in italics was added in the
reissued claims. For convenience, we produce a clean version of reissued
claim 1. We acknowledge Patent Owner’s argument that Petitioner’s Listing
of Claims “includes emphasis, double emphasis, and bracketed language
without explanation.” Prelim. Resp. 3. Petitioner’s Listing of Claims,
however, reproduces the claims as printed in the RE353 patent. We
understand Petitioner’s use of bold merely to enhance readability of the
claim.

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1. A physiological measurement system comprising:
a noninvasive physiological sensor configured to be positioned
on a patient and output a signal responsive to a physiological
condition of the patient; and
one or more processors in communication with the noninvasive
physiological sensor, the one or more processors configured to
electronically:
process the signal to determine a measurement of a
physiological parameter based at least in part upon the
signal;
determine that an alarm should be activated in response to
the measurement of the physiological parameter satisfying
an alarm activation threshold;
determine that an alarm suspension should be initiated for
a parameter-specific alarm suspension period of time
corresponding 	to 	the 	physiological 	parameter, 	the
parameter-specific alarm suspension period of time being
one of at least a plurality of parameter-specific alarm
suspension periods of time, the parameter-specific alarm
suspension period of time being different from at least one
other parameter-specific alarm suspension period of time
corresponding 	to 	at 	least 	one 	other 	physiological
parameter for which the one or more processors are
configured to determine at least one measurement;
suspend 	the 	alarm 	for 	the 	parameter-specific 	alarm
suspension period of time; and
activate 	the 	alarm 	when 	the 	measurement 	of 	the
physiological 	parameter 	satisfies 	the 	alarm 	activation
threshold after the parameter-specific alarm suspension
period of time has passed.
Ex. 1001, 7:39–8:14.

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D. 	Applied References and Evidence
Petitioner relies on the following references in the asserted grounds.
Pet. 5–8.
Reference Issue Date/
Publication Date Exhibit
U.S. Patent No. 5,865,736 (“Baker-1”) 	Feb. 2, 19994 Ex. 1005
U.S. Publication No. 2009/0247851
(“Batchelder”) Oct. 1, 20095 Ex. 1006
U.S. Patent No. 8,792,949 (“Baker-2”) 	Jul. 29, 20146 Ex. 1007
U.S. Publication No. 2005/0038332
(“Saidara”) Feb. 17, 20057 Ex. 1008
4 Baker-1 was filed on September 30, 1997, and is prior art to the challenged
claims at least under 35 U.S.C. §§ 102(a), (b), (e). See Ex. 1005, code (22);
Pet. 6–7.
5 Batchelder claims priority to provisional application No. 61/070838, filed
on March 26, 2008. See Ex. 1006, code (60). Petitioner contends that
Batchelder is prior art to the challenged claims at least under 35 U.S.C.
§ 102(e) as of the provisional filing date. Pet. 7. Patent Owner does not
challenge the status of the reference as prior art. See generally Prelim. Resp.
6 Baker-2 claims priority to provisional application No. 61/041042, filed on
March 31, 2008. See Ex. 1007, code (60). Petitioner contends that Baker-2
is prior art to the challenged claims at least under 35 U.S.C. § 102(e) as of
the provisional filing date. Pet. 7. Patent Owner does not challenge the
status of the reference as prior art. See generally Prelim. Resp.
7 Saidara was filed on June 3, 2004, and is prior art to the challenged claims
at least under 35 U.S.C. §§ 102(a), (b), (e). See Ex. 1008, code (22);
Pet. 6–7.

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Reference Issue Date/
Publication Date Exhibit
U.S. Publication No. 2003/0135087
(“Hickle”) Jul. 17, 20038 Ex. 1009
S. Malangi, Simulation and mathematical
notation of alarms unit for computer
assisted resuscitation algorithm, New
Jersey Institute of Technology, Theses
526, (2003) (“Malangi”)
Jul. 12, 20049 Ex. 1010
Petitioner also relies on the Declaration of George E. Yanulis, EngD
(Ex. 1003) to support its positions.
E. 	Asserted Grounds of Unpatentability
Petitioner asserts that claims 1–25 would have been unpatentable on
the following grounds:
Claims Challenged 	35 U.S.C. § 	References
1, 6–8, 13, 14, 18, 19, 23–25 	10310 Baker-1
1, 2, 6–9, 13–15, 18–25 	103 	Baker-1, Batchelder
8 Hickle was filed on November 1, 2002, and is prior art to the challenged
claims at least under 35 U.S.C. §§ 102(a), (b), (e). See Ex. 1009, code (22);
Pet. 6–7.
9 Petitioner submits the Declaration of Matthew J. Brown attesting that
Malangi was indexed and publicly available as of July 12, 2004. Ex. 1011,
1. Petitioner contends Malangi is prior art to the challenged claims at least
under 35 U.S.C. § 102(b). Pet. 7. Patent Owner does not challenge the
status of the reference as prior art. See generally Prelim. Resp.
10 Because the application leading to the RE353 patent was filed before
March 16, 2013, patentability is governed by the version of 35 U.S.C.
§§ 102 and 103 preceding the Leahy-Smith America Invents Act (“AIA”),
Pub L. No. 112-29, 125 Stat. 284 (2011).

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Claims Challenged 	35 U.S.C. § 	References
1, 2, 6–9, 13–15, 18–25 	103 	Baker-1, Batchelder, Baker-2
3–5, 10–12, 16, 17 	103 Baker-1, Batchelder, Baker-2,
Hickle
1, 2, 6–9, 13–15, 18–25 	103 	Saidara, Malangi
3–5, 10–12, 14, 16, 17, 25 	103 	Saidara, Malangi, Hickle11
II. 	ANALYSIS
A. 	Discretion Under 35 U.S.C. § 314(a)
Patent Owner, relying on our precedential decisions in NHK12 and the
Fintiv Order, contends that we should exercise our discretion under
35 U.S.C. § 314(a) to deny institution based on the status of the parallel
district court litigation. See Prelim. Resp. 12–20.
1. 	Legal Standards
Under 35 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 deny a petition is
a matter committed to the Patent Office’s discretion.”); SAS Inst. Inc. v.
Iancu, 138 S. Ct. 1348, 1356 (2018) (“SAS”) (“[Section] 314(a) invests the
Director with discretion on the question whether to institute review.”
11 Petitioner’s summary of the grounds at pages 7–8 of the Petition omits
claim 14 from this asserted ground. Petitioner’s detailed discussion of this
ground, however, includes a discussion of claim 14, and we consider
claim 14 to be included in this asserted ground. See Pet. 83, 86.
12 NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8
(PTAB Sept. 12, 2018) (precedential).

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(emphasis omitted)); Harmonic 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 assessment of all relevant circumstances of the 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 (denying institution relying, in part, on § 314(a) because
the parallel district court proceeding was scheduled to finish before the
Board reached a final decision).
When considering an early trial date in related litigation, the Board
evaluates the following factors (“Fintiv factors”):
1. whether the court granted a stay or evidence exists that one
may be granted if a proceeding is instituted;
2. proximity of the court’s trial date to the Board’s projected
statutory deadline for a final written decision;
3. 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 in the parallel
proceeding are the same party; and
6. other circumstances that impact the Board’s exercise of
discretion, including the merits.
Fintiv Order 5–6. In evaluating these factors, “the Board takes a holistic
view of whether efficiency and integrity of the system are best served by
denying or instituting review.” Id. at 6.

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2. 	Factual Background
The progress of the related 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 Owner filed a Complaint (Ex. 1033) against
Petitioner in the U.S. District Court for the Southern District of California.
Petitioner has filed a Motion to Stay the District Court proceedings
(Ex. 1036) and Patent Owner opposed (Ex. 2001). According to the parties,
the District Court has not yet ruled on the Motion. See Prelim. Resp. 13;
Reply 2–3. The District Court has vacated all Markman deadlines, including
the previously scheduled November 3, 2020, Markman hearing, pending its
decision on Petitioner’s Motion to Stay. See Ex. 1037.
Patent Owner served its infringement contentions on January 24,
2020. Ex. 1035; see Prelim. Resp. 15–16. Petitioner served its invalidity
contentions on March 20, 2020. Ex. 2004; see Prelim. Resp. 15–16.
On May 29, 2020, Petitioner filed the Petition in this proceeding. See
Paper 3 (according the Petition a filing date of May 29, 2020).
Per the court’s Scheduling Order, which was modified on October 6,
2020, fact discovery closes on February 12, 2021, and expert discovery
closes on May 7, 2021. Ex. 2009, 3. The Scheduling Order lists a trial date
as November 30, 2021. Id. at 4.
Petitioner filed a stipulation in the District Court. Ex. 1038. The
stipulation states that if the PTAB institutes inter partes review, Petitioner
“will not pursue in [the District Court] 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 could be raised

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under §§ 102 or 103 on the basis of prior art patent or printed publications).”
Id. at 6–7.
3. 	Analysis of the Fintiv Factors
With this background, we consider each of the factors set forth in the
Fintiv Order. We then weigh the factors and take a holistic view of whether
efficiency and integrity of the patent system are best served by denying or
instituting review.
Factor 1: whether a stay exists or is likely to be granted if a
proceeding is instituted
Petitioner has filed a Motion to Stay, but the District Court has not yet
ruled on the motion. Prelim. Resp. 13; Reply 2–3. Patent Owner contends
that a “stay is unlikely.” Prelim. Resp. 13. In particular, Patent Owner
contends that “[t]he Southern District of California finds that . . . direct
competition [between the parties in the relevant market] evidences
significant prejudice that weighs against a stay.” Id. at 14. 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 how the [District] Court rules on the motion to stay.” Reply 3
(citing Ex. 1037).
Because the District Court has not ruled on the pending motion to
stay, we determine that this factor does not weigh for or against denying
institution in this case. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper
15 at 12 (PTAB May 13, 2020) (informative) (“Fintiv DI”); Sand Revolution
II, LLC v. Cont’l Intermodal Group – Trucking LLC, IPR2019-01393, Paper
24 at 7 (PTAB June 16, 2020) (informative) (“Sand Revolution”).

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Factor 2: proximity of the 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 November 30, 2021. Ex. 2009, 4. Patent Owner contends that this
trial date “means there is little opportunity for efficiency or simplification
with IPR proceedings because . . . the final written decision date will still
come on or after trial.” Sur-reply 3. Petitioner contends, on the other hand,
that because the final written decision will issue close to the scheduled trial
date, and all Markman deadlines have been indefinitely vacated, this factor
strongly weighs in favor of instituting inter partes review. Reply 3–4.
Petitioner also notes that the District Court “has already amended its case
management order twice—including extending the trial date two months.”
Id. at 3.
“If the court’s trial date is earlier than the projected statutory deadline,
the Board generally has weighed this fact in favor of exercising authority to
deny institution under NHK.” Fintiv Order 9. On the 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 whether to institute will likely implicate other factors discussed
herein, such as the resources that have been invested in 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 denying institution in this case.

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Factor 3: investment in the parallel proceeding by the court
and parties
Patent Owner contends that “the parties and [District] Court have
invested substantial resources litigating the validity of the patents.” Prelim.
Resp. 16. As noted above, the parties have already served their respective
infringement contentions and initial invalidity contentions. However, as
Petitioner points out, all Markman deadlines have been vacated, including
the Markman hearing. Reply 4. Moreover, much other work remains in the
parallel proceeding as it relates to invalidity: fact discovery is ongoing,
expert reports are not yet due, and substantive motion practice is yet to
come. Id. Thus, although the parties and the District Court have invested
some effort in the parallel proceeding to date, further effort remains to be
expended in 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 orders related to the patent at issue in the
petition, this fact weighs against exercising discretion to deny institution
under NHK.”).
The Fintiv Order also recognizes that “notwithstanding that a
defendant has one year to file a petition, it may impose unfair costs to a
patent owner if the petitioner, faced with the prospect of a looming trial date,
waits until the district court trial has progressed significantly before filing a
petition at the Office.” Fintiv Order 11 (footnote omitted). The Order
instructs the parties to explain facts relevant to the Petition’s timing. Id.; see
also id. at 11–12 (considering timing of the Petition as part of the third
Fintiv factor). Patent Owner notes that “Petitioner waited until just before
the statutory deadline to file its Petition,” arguing that the Petition includes

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“substantially the same arguments presented in its March 20, 2020 invalidity
contentions.” Prelim. Resp. 16. Petitioner, on the other hand, contends that
it “was not dilatory in filing this petition.” Reply 5. Petitioner explains that
the parties spent six months after the complaint was filed “engaged in
settlement discussions.” Id. 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.” Id. Petitioner contends that, thereafter, it “diligently worked
to draft IPR petitions challenging nine patents and 183 claims,” including
the present Petition. Id. Patent Owner responds that “[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.”
Sur-reply 3.
Petitioner filed its Petition approximately two months after serving its
initial invalidity contentions, and approximately two weeks before the
statutory deadline. Based on the facts present here, we find that Petitioner’s
explanation for the timing of the Petition is reasonable, notwithstanding the
closeness to the statutory deadline, particularly in view of the large number
of 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 Reply 5; supra
Section I.A (identifying related inter partes review proceedings).
Due to the relatively limited investment in the parallel proceeding to
date and the fact that the timing of the Petition was reasonable, we find that
this factor weighs in favor of not exercising discretion to deny institution
under 35 U.S.C. § 314(a).

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Factor 4: overlap between issues raised in the petition and in
the parallel proceeding
Patent Owner contends that “Petitioner relies upon the same primary
references and substantially the same invalidity arguments, under the same
claim construction standard, as in the District Court.” Prelim. Resp. 17;
Ex. 2004 (Invalidity Contentions).
Petitioner notes that the Petition “seeks review of all claims of the
RE353 Patent, not merely those at issue in the [parallel proceeding].”
Reply 6; see also Ex. 2004, 1 (claims 1, 6, 7, 8, 13, 14, 18, 19, 23, and 25 of
the RE353 patent are asserted in the parallel proceeding). Further, as noted
above, Petitioner has filed in the District Court “a stipulation that, if IPR is
instituted, they will not pursue in the District Court Litigation any ground
raised or that could have been reasonably raised in an IPR.” Reply 6;
Ex. 1038. Petitioner contends that, because of this stipulation, “there will be
no overlap of invalidity issues between the [parallel district court
proceeding] and [this inter partes review].” Reply 6.
Patent Owner contends that the stipulation is “unclear” as to whether
Petitioner reserves the right to proceed based on other references cited in the
invalidity contentions. Sur-reply 3–4. 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

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§§ 102 or 103 on the basis of prior 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 to not pursue “any ground raised or that could
have been reasonably raised.” Reply 6. As noted in Sand Revolution, such a
broad stipulation better addresses concerns of duplicative efforts and
potentially conflicting decisions in a much more substantial way. Sand
Revolution 12 n.5. Accordingly, Petitioner’s broad stipulation ensures that
an inter partes review is a “true alternative” to the district court proceeding.
Id.
Thus, we find that this factor weighs strongly in favor of not
exercising discretion to deny institution under 35 U.S.C. § 314(a).
Factor 5: whether the petitioner and the defendant in the
parallel proceeding are the same party
Petitioner and Patent Owner acknowledge the parties are the same in
the inter partes proceeding and in the parallel proceeding. Prelim. Resp. 18;
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 defendant in an earlier court proceeding, the Board has weighed this fact
against exercising discretion.”).

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Factor 6: other circumstances and considerations that impact
the Board’s exercise of discretion, including the merits
As discussed below, on this preliminary record, Petitioner has met its
burden of demonstrating a reasonable likelihood that it would prevail in
showing that claims of the RE353 patent are unpatentable.13 Although we
recognize the record may change during trial, as discussed in detail below,
Petitioner has made a sufficiently persuasive showing, on the record
presently before us, that the prior art references cited in the Petition teach or
suggest all limitations of at least one challenged claim. See Fintiv Order 14–
15 (discussing the merits of the Petition as a consideration).
We determine that this factor does not weigh for or against denying
institution in this case.
Conclusion
We take “a holistic view of whether efficiency and integrity of the
system are best served by denying or instituting review” when considering
the six Fintiv factors. Fintiv Order 6. Our holistic review of the Fintiv
factors, namely that the timing of the Petition was reasonable, the relatively
limited investment in the parallel proceeding to date, and that there is
minimal potential overlap of the two proceedings, indicates that the Fintiv
factors weigh in favor of instituting inter partes review. As such, we are not
persuaded that the interests of the efficiency and integrity of the system
13 The parties include arguments directed to the merits of the asserted
grounds in their discussions of Factor 6. See Reply 7; Sur-reply 4–7. We do
not rely on these arguments in our determination below that Petitioner has
presented a reasonable likelihood of success on the merits (see infra
Sections II.F–II.I).

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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. 	Legal Standards
“In an [inter partes review], the petitioner has the burden from the
onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3)
(requiring inter partes review petitions to identify “with particularity . . . the
evidence that supports the grounds for the challenge to each claim”)). This
burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware,
LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)
(discussing the burden of proof in inter partes review).
A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of ordinary skill in the art; and (4) objective evidence of
nonobviousness.14 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
An obviousness analysis “need not seek out precise teachings directed to the
14 At this stage of the proceeding, the parties have not asserted or otherwise
directed our attention to any objective evidence of non-obviousness.

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specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR, 550 U.S. at 418; accord In re Translogic Tech., Inc.,
504 F.3d 1249, 1259 (Fed. Cir. 2007). However, Petitioner cannot satisfy its
burden of proving obviousness by employing “mere conclusory statements.”
In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
Instead, Petitioner must articulate a reason why a person of ordinary skill in
the art would have combined the prior art references. In re NuVasive,
842 F.3d 1376, 1382 (Fed. Cir. 2016).
We analyze the asserted grounds of unpatentability in accordance with
these principles to determine whether Petitioner has met its burden to
establish a reasonable likelihood of success at trial.
C. 	Level of Ordinary Skill in the Art
Petitioner contends that a person having ordinary skill in the art
“would have been a person with at least a B.S. degree in electrical or
biomedical engineering or a related field with at least two years’ experience
designing patient monitoring systems,” wherein “[l]ess work experience may
be compensated by a higher level of education, and vice versa.” Pet. 13
(citing Ex. 1003 ¶¶ 33–41).
At this stage of the proceeding, Patent Owner does not contest
Petitioner’s definition of a person of ordinary skill in the art. See generally
Prelim. Resp.
Based on the current record and for the purposes of this Decision, we
adopt Petitioner’s proposed description of the person of ordinary skill in the
art.

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D. 	Claim Construction
For this inter partes review proceeding claim terms
shall be construed using the same claim construction standard
that would be used to construe the claim in a civil action under
35 U.S.C. 	[§] 282(b), 	including 	construing 	the 	claim 	in
accordance with the ordinary and customary meaning of such
claim as understood by one of ordinary skill in the art and the
prosecution history pertaining to the patent.
37 C.F.R. § 42.100(b) (2019). Further, “[a]ny prior claim construction
determination concerning a term of the claim in a civil action, or a
proceeding before the International Trade Commission, that is timely made
of record in the inter partes review proceeding will be considered.” Id.
Under the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303,
1312–19 (Fed. Cir. 2005) (en banc), claim terms are given their ordinary and
customary meaning, as would have been understood by a person of ordinary
skill in the art at the time of the invention, in light of the language of the
claims, the specification, and the prosecution history of record. See Thorner
v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012).
Only those claim terms that are in controversy need to be construed, and
only to the extent necessary to resolve the controversy. Nidec Motor Corp.
v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir.
2017).
1. 	“alarm suspension period of time”
Petitioner contends the term “‘alarm suspension period of time’ must
be interpreted in light of the specification, which only teaches suspension of
active alarms.” Pet. 14 (citing Ex. 1003 ¶ 45). Petitioner also contends that
during prosecution of the application that issued as the RE353 patent, the

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Examiner “rejected the claims in view of prior art that teaches suspending
active alarms.” Id. (citing Ex. 1003 ¶¶ 30, 45; Pet. 10–12). However,
Petitioner notes that, in the parallel District Court proceeding, Patent Owner
asserted that this claim language is satisfied by systems in which activation
of an alarm is delayed until a measured parameter exceeds a threshold for a
predetermined period of time. Id. at 13–14. In light of these arguments,
Petitioner presumes that Patent Owner’s construction of “alarm delay or
suspension period of time” encompasses a “delay [that] is part of the alarm
threshold,” or in other words, “if the parameter returns to a normal range
within the ‘. . . delay’ period, the alarm never activates.” Id. at 14 (citing
Ex. 1003 ¶ 44).
The Petition presents different grounds depending on the
interpretation of the claims. Id. at 14–15. Specifically, Grounds 1–4 “are
directed to a construction encompassing delays before an alarm is activated
(i.e., pre-alarm delays),” and Grounds 5 and 6 “are directed to temporary
suspension of active alarms (i.e., post-alarm suspensions).” Id.
In its Preliminary Response, Patent Owner contends that Petitioner
fails to offer an actual construction of this phrase and, instead, “improperly
presents litigation-associated non-infringement arguments.” Prelim. Resp. 8.
Patent Owner argues that “‘alarm suspension period of time’ has a plain
meaning that needs no further construction.” Id.
Despite raising the issue, Petitioner does not offer an express
construction of this phrase. Pet. 14. At this stage of the proceeding, we
agree with Patent Owner that this phrase need not be construed expressly.
Accordingly, we apply the plain and ordinary meaning of “alarm suspension
period of time,” for purposes of this Decision. During trial, the parties are

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encouraged to develop the record regarding the proper construction of this
phrase in light of the Specification.
2. 	“predetermined,” “fixed,” or “pre-set” alarm suspension periods
Patent Owner further asserts that “[e]ach independent claim also
requires multiple predetermined alarm suspension periods of time where
one alarm suspension period differs from another.” Prelim. Resp. 11.
Patent Owner argues that both the plain meaning of the claim and the
specification require that the suspensions periods are “predetermined.” Id. at
12 (citing Ex. 1001, 2:37–38, 5:58–60, 6:5–11, Figs. 3, 4, code (57)).
Elsewhere, Patent Owner refers to this limitation as requiring delay or
suspension periods that are “fixed.” See, e.g., id. at 3, 28, 32.
Petitioner does not discuss whether the “alarm suspension period of
time” requires a “predetermined” or “fixed” period. See generally Pet.
However, Petitioner asserted Grounds 3 and 4, as an alternative to
Grounds 1 and 2, “[t]o the extent the RE353 [patent] claims require pre-set
‘parameter-specific alarm suspension periods of time.’” Id. at 57.
At this stage of the proceeding, we do not agree that the recited “alarm
suspension period of time” must be predetermined, fixed, or pre-set. In
support of its position, Patent Owner identifies portions of the Specification
that it contends “repeatedly confirms that the duration of suspension after the
alarm condition triggers is ‘predetermined.’” Prelim. Resp. 12 (citing
Ex. 1001, 2:37–38, 5:58–60, 6:5–11, Figs. 3–4, code (57)).
The claims themselves, however, do not recite a predetermined, fixed,
or pre-set time period. It is well-settled that “[i]t is improper for a court to
add ‘extraneous’ limitations to a claim, that is, limitations added ‘wholly
apart from any need to interpret what the patentee meant by particular words

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or phrases in the claim.’” Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948,
950 (Fed. Cir. 1993) (quoting E.I. du Pont de Nemours & Co. v. Phillips
Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988)). Indeed, “[e]ven
when the specification describes only a single embodiment, the claims of the
patent will not be read restrictively unless the patentee has demonstrated a
clear intention to limit the claim scope using ‘words or expressions of
manifest exclusion or restriction’.” Liebel-Flarsheim Co. v. Medrad, Inc.,
358 F.3d 898, 906 (Fed. Cir. 2004) (citation omitted). Patent Owner does
not demonstrate such intent. In fact, the Specification indicates that suspend
“duration 324 may be a function of the out-of-limit parameter 312”
(Ex. 1001, 5:60–61), at least suggesting that it need not be a specific
predetermined, fixed, or pre-set value.
Accordingly, at this stage of the proceeding, we decline to import into
the claims a requirement that the delay or suspension period be
predetermined, fixed, or pre-set. SuperGuide Corp. v. DirecTV Enters., Inc.,
358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim
language may be aided by the explanations contained in the written
description, it is important not to import into a claim limitations that are not
a part of the claim.”).
3. 	Order of Claim Language
Patent Owner further asserts that each of the independent claims
“(a) determines that an alarm should be activated in response to the
measurement of the physiological parameter satisfying an alarm activation
threshold, (b) determines that an alarm suspension should be initiated for a
parameter-specific period of time, and then (c) suspends the alarm for the
parameter-specific period of time.” Prelim. Resp. 8–9. Patent Owner

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proposes the Board construe the claims so “that (a) generation of the alarm
condition differs from (b) the determination to suspend, which likewise
differs from, and must precede, (c) the parameter-specific alarm suspension
period of time.” Id. at 10. According to Patent Owner, “[t]his is dispositive
for Grounds 1–4.” Id.
Patent Owner’s arguments in this regard imply that “determin[ing]
that an alarm should be activated in response to the measurement of the
physiological parameter satisfying an alarm activation threshold,” as
claimed—to which Patent Owner also refers as “triggering” or “generation
of the alarm condition”—requires actual activation (or indication) of an
alarm prior to delay or suspension of the alarm. See, e.g., id. (distinguishing
Petitioner’s prior art that discloses a delay “before an alarm is activated” on
that basis); see also id. at 31–32 (distinguishing Petitioner’s alleged “alarm
activation threshold” on the basis that “no alarm is triggered after passing
the . . . threshold”).
Based on the record now before us, we are not persuaded that
determining that an alarm should be activated in response to satisfying an
alarm activation threshold requires actual activation (or indication) of an
alarm. The phrase “alarm activation threshold” is not used in or defined by
the Specification of the RE353 patent. The only place this language appears
in the RE353 patent is in the claims. The phrase was first introduced in a
Preliminary Amendment filed with the application that led to the ’121 patent
(i.e., the original patent of which the RE353 patent is a reissue). See
Ex. 1016, 142–148. For example, independent claim 2 presented in the
Preliminary Amendment recited, inter alia, “activate an alarm in response
to determining an alarm activation threshold has been satisfied by the

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physiological parameter measurement.” Id. at 143 (emphases added). Here,
the claim expressly recited activation of the alarm in addition to the
recitation of satisfying the alarm activation threshold. See Innova/Pure
Water v. Safari Water Filtration, 381 F.3d 1111, 1119 (Fed. Cir. 2004)
(“While not an absolute rule, all claim terms are presumed to have meaning
in a claim.”). Relatedly, claim 1 of the RE353 patent expressly recites
“activat[ing] the alarm when the measurement of the physiological
parameter satisfies the alarm activation threshold after the parameter-
specific alarm suspension period of time has passed” (Ex. 1001, 8:10–13
(emphasis added)), suggesting that, if the inventors had wanted to require
actual activation (or indication) of an alarm prior to suspension of the alarm,
they knew how to do so.
This evidence tends to lead to a conclusion that Patent Owner did not
intend that use of the phrase “alarm activation threshold” implicitly requires
an alarm to actually activate prior to delay or suspension of the alarm.
Instead, we determine that the claimed “determin[ing] that an alarm should
be activated in response to the measurement of the physiological parameter
satisfying an alarm activation threshold” is met simply by determining that
the physiological parameter is outside of its set limit, and that it does not
require actual activation (or indication) of an alarm.
We need not address further Patent Owner’s argument regarding the
order of claim limitations at this stage of the proceeding, as it is not
necessary to resolve the controversies before us. Nidec, 868 F.3d at 1017.

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E. 	Overview of the Asserted References
1. 	Baker-1 (Ex. 1005)
Baker-1 is titled “Method and Apparatus for Nuisance Alarm
Reductions.” Ex. 1005, code (54). Baker-1 describes “controlling alarms in
[a] medical diagnostic apparatus where an alarm is generated when a
measured value for a physiological parameter passes a threshold.” Id. at
1:54–57. “Alarms are inhibited based upon a combination of the amount of
time and the amount by which the threshold is past.” Id. at 1:60–62. In a
pulse oximeter example, alarms may be set for oxygen saturation or pulse
rate. Id. at 1:64–2:6. The combination of time and amount may calculated
as an integral or some function of an integral. Id. at 1:62–63.
Baker-1 describes a typical pulse oximeter, including a digital display
circuit, circuitry select buttons, alarm status lights, optically coupled
adjustment knob, synchronization status light, LED digital view meter, and
power switch. Id. at 2:58–64. The pulse oximeter includes a sensor attached
to a patient’s finger. Id.

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Figure 2 of Baker-1 is reproduced below:
Figure 2, above, illustrates a block diagram of pulse oximetry circuitry. Id.
at 2:35–36. Figure 2 describes sensor 29 and photosensor 16. Id. at 3:3–17.
“The signal from photosensor 16 is provided through input amplifier 20 to
. . . queued serial input module 46, which provides data to [] RAM 52 for
reading and analysis by [] CPU 50,” of microcontroller/processor unit
(MPU) 44. Id.
Figure 3 of Baker-1 is reproduced below.

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Figure 3, above, illustrates an alarm response applying an integral algorithm.
Id. at 2:37–38, 3:32. The figure illustrates three separate incursions below
low sat threshold 72. Id. at 3:32–33. In the first example, “deep but short
incursion 76 produces [] integral value 78 which does not exceed [] integral
threshold 74, and thus does not produce an alarm.” Id. at 3:36–41. In the
second example, incursion 80 barely drops below the low sat threshold, but
stays there for length of time that would generate an alarm in prior systems;
again, however, integral threshold 74 is not crossed, so an alarm does not
signal. Id. at 3:42–52. In the third example, “final incursion 84 is both long
enough and deep enough to cause [] integral value 86 to exceed the integral
threshold and generate an alarm.” Id. at 3:53–55. Baker-1 describes a
similar integral method to screen pulse rate alarms. Id. at 5:29–38.
Baker-1 discloses that “rather than an integral, some other function of
the time and amount of an incursion could be used to control when an alarm
is generated.” Id. at 5:46–48. Furthermore, “[a]n alarm can be considered
inhibited according to an integral, or the alarm could simply have its
generation controlled by the integral without anything being inhibited.” Id.
at 5:48–51.
2. 	Batchelder (Ex. 1006)
Batchelder is titled “Graphical User Interface for Monitor Alarm
Management.” Ex. 1006, code (54). Batchelder describes an alarm
integration method that reduces nuisance alarms on patient monitors. Id.
¶ 15. “An exemplary alarm management system may be the SatSeconds TM
alarm management technology.” Id.

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Batchelder’s Figure 1 is reproduced below.
Figure 1, above, “is a graph illustrating a patient’s measured SpO2 versus
time.” Id. ¶ 9. Line 4 represents a threshold SpO2 value. Id. ¶ 15. “Rather
than sounding an alarm as soon as the patient’s measured SpO2 (plot 3)
drops below the threshold value (line 4), the SatSeconds system measures []
area 5 [shaded] by integrating the difference between [] plot 3 and [] line 4
when [] plot 3 is below [] line 4.” Id. “[S]ignificant desaturation event 6
(e.g., a large drop in SpO2 ) may cause the alarm to activate quickly because
the SatSeconds threshold value may be exceeded in [] short period of
time 7.” Id. “In contrast, [] minor desaturation event 8 . . . may not cause
the alarm to be activated quickly. That is, [] minor desaturation event 8 may
continue for [] relatively long period of time 9 before the SatSeconds
threshold value is exceeded.” Id.
Batchelder describes a monitor device including a display, a speaker,
and user inputs. See id. ¶ 24. The user inputs enable the caregiver to change
the SpO2 and SatSeconds threshold value. Id. ¶¶ 25, 26. “For example, []
SpO2 threshold 112 may be adjusted in increments of 1% while []
SatSeconds threshold 114 may be adjusted in increments of 25. A number

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of discreet values may be available for [] thresholds 112 and 114, or the
value adjustment may be continuous.” Id. ¶ 28. Figures 5–8 of Batchelder
(not reproduced herein) illustrate how changes in SpO2 and SatSeconds
thresholds effect the alarm settings. See id. ¶¶ 30–32.
3. 	Baker-2 (Ex. 1007)
Baker-2 is titled “Reducing Nuisance Alarms.” Ex. 1007, code (54).
Baker-2 describe an alarm condition adjustment operation that adjusts a
predetermined alarm condition based on statistical parameters. Id. at 11:53–
56. For example, the adjustment may include changing the value of a
predetermined threshold, changing the type of threshold, and changing a
temporal condition (such as a delay period). Id. at 11:58–65. A generate
alarm operation “compares the adjusted threshold to the appropriate
parameter to determine if the parameter exceeds the adjusted threshold (i.e.,
is outside of the acceptable range). If so, the alarm is generated.” Id. at
12:35–38. Baker-2 describes that “the delay period may be selected from
one or more predetermined delay periods based on the calculated accuracy.”
Id. at 15:37–41.
4. 	Hickle (Ex. 1009)
Hickle is titled “User Interface for Sedation and Analgesia Delivery
Systems and Methods.” Ex. 1009, code (54). Hickle describes a user
interface for a sedation and analgesia system. Id. ¶ 10. The user interface
displays critical parameters of the patient, and includes an alarm setting
display that allows a user to enter new values for each alarm limit (e.g., high
warning, high caution, low caution, low warning) with keypad 36. Id. ¶¶ 82,
152.

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5. 	Saidara (Ex. 1008)
Saidara is titled “System for Monitoring Physiological
Characteristics.” Ex. 1008, code (54). Saidara describes “apparatuses and
methods for monitoring physiological characteristics such as blood glucose
levels.” Id. ¶ 13. Saidara describes monitoring other physiological
characteristics in addition to blood glucose, such as oxygen saturation. Id.
¶ 60. The monitoring system may include electrode sensors placed on the
external surface of the skin. Id. ¶ 70. The electrode sensors can determine
oxygen saturation level. Id. ¶ 76.
One or more alarms may trigger by various conditions, e.g., meal
markers, exercise markers, high blood glucose markers, and low blood
glucose markers. Id. ¶ 28. Advanced alarm functions include “an alarm
repeat delay to prevent redundant alarms for a specified period and an alarm
snooze function to prevent alarms generally for a specified period.” Id. ¶ 32.
Saidara further describes that “the alarm repeat delay function can be set
differently for hypoglycemic alarms and hyperglycemic alarms of different
severities.” Id. ¶ 133. For example, “[i]f a lower threshold hyperglycemic
alarm is triggered, a relatively long repeat delay may be invoked. However,
if a higher threshold hyperglycemic alarm is triggered, a shorter repeat delay
may be used so that the user is warned more frequently because of the
severity of his condition.” Id.
Saidara further describes an alarm snooze function for temporarily
disabling the alarm. Id. ¶ 138. “[A]lthough both the alarm repeat delay
function and the alarm snooze function prevent alarms for specified periods,
they are not the same.” Id. ¶ 139. “The alarm repeat delay is initiated . . . in
response to a first alarm. In contrast, the alarm snooze function is activated

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by the user directly, either by directing the monitor to snooze immediately or
scheduling a snooze at a specified time.” Id.
6. 	Malangi (Ex. 1010)
Malangi is titled “Simulation and mathematical notation of alarms
unit for computer assisted resuscitation algorithm.” Ex. 1010, Title.
Malangi describes computer assisted resuscitation algorithm (“CARA”) as a
“software system used to drive the pump responsible for fluid resuscitation
of patients suffering from conditions that lead to hypotension.” Id. at 2. The
system includes a number of alarm units for indicating various conditions.
Id. at 6. “Alarms may be silenced for a given period of time by pressing a
soft ‘silence alarm’ button on the screen.” Id. at 7. The alarms have certain
priorities and silence times, depending on the particular alarm. Id. at Table
2.1. “All active alarms are reset if there is a ‘pump unplugged’ alarm.” Id.
at 7.
The alarms are controlled by various procedures and functions,
including “procedure Add Alarms,” “procedure Silence Alarms,” and
“Function silencealarms” which “silences the alarm when caregiver chooses
to silence it. It calls the Reminder in which a timer is set for the silence time
of that particular alarm.” Id. at 12–13, 18–19.
F. 	Asserted Obviousness over Baker-1
Petitioner contends that claims 1, 6–8, 13, 14, 18, 19, and 23–25
would have been obvious over Baker-1. Pet. 29–49. As noted above, this
asserted ground of unpatentability is “directed to a construction
encompassing delays before an alarm is activated (i.e., pre-alarm delays).”
Id. at 14.

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Patent Owner argues that Baker-1 does not teach or suggest all
features of the claimed system and that Petitioner fails to demonstrate a
reasonable expectation of success. Prelim. Resp. 25–35.
1. 	Independent Claim 1
“A physiological measurement system comprising”
Petitioner asserts that Baker-1 teaches the subject matter of the
preamble of claim 1. Pet. 30. In particular, Petitioner argues that Baker-1
teaches a “medical diagnostic equipment measuring a physiological
parameter.” Id. at 30–31 (citing Ex. 1005, 2:49–51; Ex. 1003 ¶ 70).
Patent Owner does not present arguments regarding this limitation.
See generally Prelim. Resp.
We determine that, on the record now before us, Petitioner’s cited
evidence sufficiently supports its contentions regarding the subject matter of
the preamble.15
“a noninvasive physiological sensor configured to be
positioned on a patient and output a signal responsive to a
physiological condition of the patient”
Petitioner asserts that Baker-1 teaches this limitation. Pet. 31–32. In
particular, Petitioner argues that Baker-1’s non-invasive pulse oximeter is
configured to attach to a patient’s finger and output signals responsive to
SpO2 (oxygen saturation) and PR (pulse rate) measurements of a patient. Id.
15 Because we are persuaded that Petitioner has shown that Baker-1 teaches
the preamble, we need not decide whether the preamble is limiting for
purposes of this Decision.

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(citing Ex. 1005, 2:48–56, 2:58—64, 3:3–15, Figs. 1, 2, claims 3, 4, 11, 12;
Ex. 1003 ¶¶ 71, 72).
Patent Owner does not present arguments regarding this limitation.
See generally Prelim. Resp.
We determine that, on the record now before us, Petitioner’s cited
evidence sufficiently supports its contentions regarding this limitation.
“one or more processors in communication with the
noninvasive physiological sensor, the one or more processors
configured to electronically . . .”
Petitioner asserts that Baker-1 teaches this limitation. Pet. 32. In
particular, Petitioner argues that Baker-1’s microcontroller/processor unit
receives a signal from the noninvasive sensor for reading and analysis. Id.
(citing Ex. 1005, 3:3–15, Fig. 2; Ex. 1003 ¶ 73).
Patent Owner does not present arguments regarding this limitation.
See generally Prelim. Resp.
We determine that, on the record now before us, Petitioner’s cited
evidence sufficiently supports its contentions regarding this limitation.
“the one or more processors configured to electronically . . .
process the signal to determine a measurement of a
physiological parameter based at least in part upon the
signal”
Petitioner asserts that Baker-1 teaches this limitation. Pet. 33. In
particular, Petitioner argues that a person of ordinary skill in the art “would
understand that ‘reading and analysis’ of the signal received from ‘sensor
29’ necessarily means ‘CPU 50’ processes the signal and determines a
measurement of a physiological parameter based on the signal, required for

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calculation of the SpO2 integral value.” Id. (citing Ex. 1005, 3:5–15, Fig. 2,
claim 17; Ex. 1003 ¶ 74).
Patent Owner does not present arguments regarding this limitation.
See generally Prelim. Resp.
We determine that, on the record now before us, Petitioner’s cited
evidence sufficiently supports its contentions regarding this limitation.
“the one or more processors configured to electronically . . .
determine that an alarm should be activated in response to the
measurement of the physiological parameter satisfying an
alarm activation threshold”
Petitioner asserts that Baker-1 teaches this limitation. Pet. 33. In
particular, Petitioner argues that Baker-1 discloses a system that determines
both the amount of time the measured value is past the threshold, and the
amount by which the threshold is past. Id. (citing Ex. 1005, 1:54–2:6, 2:51–
56, 3:18–31, 5:29–37, Fig. 3; Ex. 1003 ¶¶ 75, 76). Dr. Yanulis testifies that
a person of ordinary skill in the art “would understand that the SpO2 and PR
thresholds of Baker-1 are alarm activation thresholds, but that the time-
integral algorithms of Baker-1 simply delay[] alarm activation once those
thresholds are satisfied.” Ex. 1003 ¶ 75; see also Ex. 1005, code (57)
(teaching that “an alarm is generated when a measured value for a
physiological parameter passes a threshold; . . . [and t]he alarm is inhibited”
based on how long and by how much the measured value is past the
threshold (emphasis added)).
Patent Owner argues that “Baker 1 does not ‘determine that an alarm
should be activated’ and does not ‘determine that an alarm suspension
should be initiated,’ . . . before suspending the alarm for a period of time.”
Prelim. Resp. 31. According to Patent Owner,

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Baker 1 	distinguishes 	its 	integral 	algorithm from an
approach (like RE353) that triggers an alarm condition after
crossing a parameter threshold, followed by a parameter-specific
suspension period of time before articulating an alarm. Instead,
Baker 1 explains that passing the saturation threshold alone
“does not produce an alarm,” and contrasts its approach from
devices where, after a “low sat[uration] threshold was passed, an
alarm would have been generated.” 	[Ex. 1005,] 3:36–41. 	. . .
As illustrated in Figure 3 [of Baker-1], the integral value—which
determines whether the alarm triggers and how long it takes to
trigger—is dynamic and constantly changing.
Prelim. Resp. 31. According to Patent Owner, “Petitioner suggests the low
saturation threshold in Baker 1 is the claimed ‘alarm activation threshold,’
. . . but Baker 1 emphasizes that no alarm is triggered after passing the low
saturation threshold.” Id. at 31–32 (citing Pet. 33–34; Ex. 1005, 3:38–41).
Although Patent Owner’s arguments are consistent with certain
embodiments disclosed in the RE353 specification, as we have discussed
above, the plain language of the claims does not require that an alarm is
actually activated (or that an indication of the alarm occurs) when the
physiological parameter satisfies the alarm activation threshold. See supra
Section II.D.3. The cited disclosure in Baker-1 (e.g., that the measured
value is past the low saturation threshold) is sufficient to teach that the
parameter is outside of its set limit, or in other words, that it “satisf[ies] the
alarm activation threshold.” See id.; see also Ex. 1005, Fig. 3.
We determine that, on the record now before us, Petitioner’s cited
evidence sufficiently supports its contentions regarding this limitation.
“the one or more processors configured to electronically . . .
determine that an alarm suspension should be initiated for a
parameter-specific alarm suspension period of time
corresponding to the physiological parameter, the parameter-
specific alarm suspension period of time being one of at least a

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plurality of parameter-specific alarm suspension periods of
time, the parameter-specific alarm suspension period of time
being different from at least one other parameter-specific
alarm suspension period of time corresponding to at least one
other physiological parameter for which the one or more
processors are configured to determine at least one
measurement”
Petitioner asserts that Baker-1 teaches this limitation. Pet. 34–38. In
particular, Petitioner states “Baker-1 teaches parameter-specific (SpO2 and
PR) algorithms resulting in different parameter-specific alarm suspensions.”
Id. at 34 (citing Ex.1005, 1:57–63, 3:18–55; Ex. 1003 ¶ 76, 84). Baker-1
teaches “calculat[ing] the integral of the difference between the current
saturation and a saturation threshold whenever the current saturation is
below the saturation threshold.” Ex. 1005, 3:19–21; see also id. at 5:29–32
(discussing a different “integral method to screen pulse rate bradycardia and
tachycardia alarms”). Petitioner explains that the SpO2 or PR alarm does not
activate immediately when falling below the saturation threshold, but instead
is delayed until the calculated integral value exceeds the integral threshold.
Pet. 35 (citing Ex. 1005, 3:30–55, Fig. 3; Ex. 1003 ¶ 79), 38 (citing
Ex. 1005, 3:30–31, 5:29–37, Fig. 3; Ex. 1003 ¶ 84).
Petitioner argues that a person of ordinary skill in the art would
understand that SpO2-related “integral threshold 74” is a predetermined
value that “can be changed by a user because no values for the integral
threshold are provided in Baker-1, as they are set by a user.” Id. at 34–35
(citing Ex. 1005, 1:64–2:6; Ex. 1003 ¶ 77). Petitioner also argues that a
person of ordinary skill in the art would understand that SpO2-related
“‘saturation threshold 72’ must also be a predetermined value that can be

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changed by a user because it is represented as a variable in the integral
algorithm.” Id. at 35 (citing Ex. 1005, 3:18–55, Fig. 3; Ex. 1003 ¶ 78).
Petitioner argues that “[l]ike the SpO2 integral threshold, the [pulse
rate] integral threshold is also described as a predetermined value, and a
[person of ordinary skill in the art] would understand it can be changed by a
user to provide customized care for a patient, and because no values for the
integral threshold are provided in Baker-1.” Id. at 37 (citing Ex. 1005, 1:64–
2:6; Ex. 1003 ¶ 82).
Patent Owner argues that each independent claim “requires a
parameter-specific alarm suspension period of time that differs from at least
one other parameter-specific alarm suspension period of time. Thus, the
alarm suspension period of time must be known and fixed in the system.”
Prelim. Resp. 28. According to Patent Owner, Baker-1 describes fixed
delays as “problematic” and, instead “uses a dynamic calculation to
determine whether to trigger an alarm. As a result, in Baker 1, the time
between initial measurement and alarm activation is unknown” and,
moreover, the “dynamic calculation may never reach the threshold to trigger
an alarm in the first place.” Id. at 29; see also id. at 35 (“T]he integral value
cannot be a predetermined suspension associated with a particular parameter
because a [person of ordinary skill in the art] could not know the measured
values before the values are measured.”). For example, Patent Owner points
to Figure 3 of Baker-1, in which there are multiple events that pass the
saturation threshold, but do not trigger the alarm. Id. at 33. Patent Owner
argues that a user, thus, can only determine alarm activation after the fact.
Id.

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We do not agree with this argument. As discussed in Section II.D.2
above, the claims do not recite a predetermined, fixed, or pre-set delay or
suspension period, and we decline to import such a requirement into the
claims.
Patent Owner also argues that the Petition fails to establish that an
ordinarily skilled artisan would have had a reasonable expectation of success
in modifying the teachings of Baker-1. Prelim. Resp. 25–28. In particular,
Patent Owner argues that the Petition fails to “even mention a reasonable
expectation of success . . . let alone identify evidence to support its
position.” Id. at 26–27.
We do not agree with this argument. Petitioner contends that a person
of ordinary skill in the art would have been motivated to combine Baker-1’s
SpO2 and PR alarm integral algorithms, to the extent they are not disclosed
in a single embodiment, into a single monitor. Pet. 29–30. We conclude,
based on the record now before us, that a person of ordinary skill in the art
would have had a reasonable expectation of success making such a
combination. Dr. Yanulis testifies that SpO2 and PR are both conventional
indicators of physiological problems and are conventionally measured by the
same pulse oximeter device. Ex. 1003 ¶¶ 65–66. Moreover, Dr. Yanulis
testifies that Baker-1’s SpO2 and PR algorithms both seek to avoid false
alarms and combining them into a single device would predictably achieve
this goal. Id. ¶ 67. The failure of Dr. Yanulis and Petitioner to employ the
precise phrase “reasonable expectation of success” does not detract from this
showing.

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We determine that, on the record now before us, Petitioner’s cited
evidence and reasoning sufficiently supports its contentions regarding this
limitation.
“the one or more processors configured to electronically . . .
suspend the alarm for the parameter-specific alarm suspension
period of time”
Petitioner asserts that Baker-1 teaches this limitation. Pet. 38.
Specifically, Petitioner argues that Baker-1 teaches “[w]hen the SpO2
measurement exceeds the SpO2 threshold, the SpO2 integral algorithm begins
calculating the SpO2 integral value and the alarm is suspended for a period
of time (time n) specific to the SpO2 measurement.” Id. (citing Ex. 1005,
3:18–21; Ex. 1003 ¶ 86).
Patent Owner does not present arguments regarding this limitation,
beyond those discussed with respect to the previous limitation. See
generally Prelim. Resp.
We determine that, on the record now before us, Petitioner’s cited
evidence and reasoning sufficiently supports its contentions regarding this
limitation.
“the one or more processors configured to electronically . . .
activate the alarm when the measurement of the physiological
parameter satisfies the alarm activation threshold after the
parameter-specific alarm suspension period of time has
passed”
Petitioner asserts that Baker-1 teaches this limitation. Pet. 33. In
particular, Petitioner argues that Baker-1’s CPU 50 “activates an SpO2 alarm
after the parameter-specific alarm suspension period of time has passed in
response to determining the SpO2 integral threshold is satisfied by the SpO2

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integral value and the SpO2 measurement still exceeds the PR threshold.” Id.
(citing Ex. 1005, 3:32–55, Fig. 3; Ex. 1003 ¶¶ 87, 88).
Patent Owner argues that Petitioner conflates “multiple distinct
limitations”—namely, determining that an alarm should be activated, then
suspending the alarm, and then generating the alarm after the parameter-
specific suspension period of time passes. Prelim. Resp. 35.
We do not agree that Petitioner conflates these limitations. Petitioner
explains sufficiently how it contends Baker-1 teaches or suggests each of the
“distinct limitations” of the claim. Specifically, Petitioner relies on
Baker-1’s SpO2 and PR thresholds as teaching alarm activation thresholds,
which indicate when an alarm “should be activated.” Pet. 33; see Ex. 1003
¶ 75; supra Section II.F.1.e). As Dr. Yanulis explains, “the time-integral
algorithms of Baker-1 simply delay[] alarm activation once those thresholds
are satisfied.” Ex. 1003 ¶ 75. In other words, an indication of the alarm is
delayed until the calculated integral value exceeds the integral threshold—so
long as the SpO2 or PR algorithms calculate an integral value within the
integral threshold, the indication of the alarm is suspended. Pet. 34–38; see
supra Section II.F.1.f) and II.F.1.g). Then, Baker-1’s processor indicates the
alarm when the calculated integral value exceeds the threshold, i.e., after
passage of the integral-specific alarm suspension period of time. Pet. 39.
We determine that, on the record now before us, Petitioner’s cited
evidence sufficiently supports its contentions regarding this limitation.
Conclusion as to Claim 1
For the reasons discussed above, we determine that Petitioner has
shown a reasonable likelihood of success in showing that claim 1 would
have been obvious in view of Baker-1.

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2. 	Independent claims 13 and 18
Independent claims 13 and 18 recite a method and system,
respectively, and recite limitations similar to those of claim 1.16 Petitioner
relies on the same teachings of Baker for claims 13 and 18 as those
discussed above for claim 1. See Pet. 43–48.
At this stage of the proceeding, Patent Owner does not present
arguments separate from those discussed above with respect to claim 1. See
generally Prelim. Resp.
For the same reasons discussed regarding claim 1, we determine that,
on the record now before us, Petitioner’s cited arguments and evidence
sufficiently support its contentions regarding claims 13 and 18.
G. 	Asserted Obviousness over Baker-1 and Batchelder
Petitioner asserts that claims 1, 2, 6–9, 13–15, and 18–25 would have
been obvious over Baker-1 and Batchelder. Pet. 49–56. As noted above,
this asserted ground is “directed to a construction encompassing delays
before an alarm is activated (i.e., pre-alarm delays).” Id. at 14.
Regarding independent claims 1, 13, and 18, as well as dependent
claims 6–8, 14, 19, and 23–25, Petitioner argues that “[t]o the extent Baker-1
does not explicitly teach integral thresholds and SpO2 and PR thresholds and
integral thresholds can be adjusted by a user, thus resulting in different alarm
suspension times”; Batchelder expressly teaches these limitations. Id. at 49.
Specifically, Petitioner argues that Batchelder teaches adjusting SpO2
thresholds in increments of 1% and SatSeconds thresholds in increments of
16 Claims 13 and 18 also recite a memory, and first and second parameter-
specific alarms suspension periods.

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25. Id. at 50 (citing Ex. 1006 ¶¶ 15, 16, 25, 26, 28, Figs. 4–8; Ex. 1003
¶ 127). Petitioner argues that Batchelder teaches, “when SpO2 or
SatSeconds thresholds are adjusted, the amount of time it takes for the
SatSeconds value to reach the threshold and sound an alarm (i.e., the alarm
suspension) changes.” Id. at 50–51 (citing Ex. 1006 ¶¶ 30–32, Figs. 5–8;
Ex. 1003 ¶ 127).
Petitioner argues that “Batchelder merely represents common
knowledge in the art or well-known prior art techniques.” Id. at 50.
Petitioner further argues that a person of ordinary skill in the art would have
combined Baker-1 and Batchelder “because Batchelder expressly discloses
that which Baker-1 implicitly teaches—a caregiver may adjust SpO2 and PR
thresholds and integral threshold, resulting in different alarm suspension
time periods.” Id. (citing Ex. 1003 ¶ 129).
Petitioner presents additional arguments and evidence regarding the
limitations of several dependent claims. Id. at 52–56.
At this stage of the proceeding, Patent Owner does not present
arguments separate from those discussed above with respect to Baker-1. See
generally Prelim. Resp.
H. 	Asserted Obviousness over Baker-1, Batchelder, and Baker-2, with or
without Hickle
Petitioner asserts that claims 1, 2, 6–9, 13–15, and 18–25 would have
been obvious over Baker-1, Batchelder, and Baker-2. Pet. 57–59. Petitioner
asserts that claims 3–5, 10–12, 16, and 17 would have been obvious over
Baker-1, Batchelder, Baker-2, and Hickle. Id. at 60–63. As noted above,
these asserted grounds of unpatentability are “directed to a construction

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encompassing delays before an alarm is activated (i.e., pre-alarm delays).”
Pet. 14.
Patent Owner argues that the addition of Baker-2 “does not
meaningfully change” the calculation approach of Baker-1, and therefore the
asserted combination does not teach the claimed invention. See Prelim.
Resp. 36–43.
Petitioner presents this asserted ground, as an alternative, in the event
that “the RE353 [patent] claims require pre-set ‘parameter-specific alarm
suspension periods of time.’” Pet. 57. Because we determine, on the record
now before us, that the recited “alarm suspension period of time” need not
be predetermined, fixed, or pre-set (see supra Section II.D.2), we do not
address these grounds further for purposes of this Decision.
I. 	Asserted Obviousness over Saidara and Malangi, with or without
Hickle
Petitioner asserts that claims 1, 2, 6–9, 13–15, and 18–25 would have
been obvious over the combination of Saidara and Malangi. Pet. 63–83.
Petitioner asserts that claims 3–5, 10–12, 14, 16, 17, and 24 would have
been obvious over the combination of Saidara, Malangi, and Hickle. Id.
at 83–87. As noted above, these asserted grounds are “directed to temporary
suspension of active alarms (i.e., post-alarm suspensions).” Id. at 14.
Patent Owner argues Saidara and Malangi do not teach or suggest all
features of the claimed system and that Petitioner fails to identify a reason to
combine the references. Prelim. Resp. 42–53.
Petitioner asserts that Saidara teaches setting different alarm delays
for hypoglycemia and hyperglycemia, and different severities of each
condition. Pet. 65–66 (citing Ex. 1008 ¶¶ 128, 130, 132–133 Figs. 4D–4E;

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Ex. 1003 ¶¶ 172–173). Petitioner further asserts that Saidara teaches
applying the alarm delays to a wide variety of physiological characteristics,
including measuring SpO2 . Id. at 65 (citing Ex. 1008 ¶¶ 60, 76; Ex. 1003
¶ 173). In light of this teaching, Petitioner contends that a person of
ordinary skill in the art would have been motivated to modify Saidara “to
monitor additional physiological parameters and apply different alarm repeat
delay periods to these parameters to provide more comprehensive data about
a patient and to achieve the same predictable result,” which Petitioner
contends is “to prevent distraction to the caregiver from ongoing audible
alarms or new alarms triggered by medical intervention, while also
providing a caregiver with intermittent warnings corresponding to the
severity of a continuing or worsening alarm condition that may require
escalated medical intervention.” Id. at 66–67 (citing Ex. 1003 ¶ 173).
Petitioner further asserts that “[t]o the extent Saidara does not disclose
specific examples of alarm repeat delay periods for the identified additional
monitored physiological characteristics, Malangi discloses a [blood pressure
(‘BP’)] monitor including a noninvasive physiological sensor.” Id. at 67
(citing Ex. 1010, Abstr., 1–3; Ex. 1003 ¶ 174). According to Petitioner,
“Malangi teaches various BP measurements [that] have different silence
times, with silence times correspond[ing] to the severity of the BP
measurement.” Id. at 67–68 (citing Ex. 1010, 6–7, 12–13, 18–20, 35;
Ex. 1003 ¶¶ 175–176).
Petitioner asserts that “[b]oth Saidara and Malangi teach it was
well-known to suspend active alarms for different physiological parameters,
with different suspension time periods applying to different physiological
parameters and corresponding to the severity of the monitored parameter.”

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Id. at 68 (citing Ex. 1003 ¶ 177). Petitioner further argues that “combining
the teachings of Saidara with Malangi would have predictably measured
both SpO2 and BP and applied different alarm suspensions to those
measured parameters according to the respective teachings of Saidara and
Malangi.” Id. at 69 (citing Ex. 1003 ¶ 178). Petitioner contends that a
person of ordinary skill in the art would have been motivated to combine
Saidara and Malangi as proposed in order “to comprehensively monitor a
patient’s health using a single monitor, and apply different alarm suspension
periods corresponding to different parameters and the severity of a
parameter measurement in order to ensure a caregiver acknowledges the
currency of alarms and can provide treatment without triggering additional
alarms.” Id. at 68; see Ex. 1003 ¶ 177.
Patent Owner argues, inter alia, that Petitioner has not shown that a
person of ordinary skill in the art would have combined Saidara and
Malangi. Prelim. Resp. 43.
Patent Owner argues that Saidara teaches a single-parameter blood
glucose monitor used by a patient to self-monitor glucose and deliver
insulin. Id. at 43–46; see also id. at 45 (disputing that Saidara discloses
oxygen saturation alarms). Patent Owner argues that Malangi, on the other
hand, teaches a single-parameter blood pressure monitor operated by a
caregiver or paramedic. Id. at 46–47.
In light of these purportedly disparate teachings, Patent Owner argues
that Petitioner fails to offer a credible motivation to combine because
“[t]hese references have different users (patient-user versus paramedic
resuscitating a patient), different goals (improved patient self-treatment
versus life-or-death resuscitation during war), and monitor different

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physiological parameters (blood glucose versus blood pressure).” Id. at 49.
Patent Owner argues that Petitioner’s proposed modification would
“fundamentally change[] Saidara’s patient-used device.” Id. at 48–50.
(citing Pet. 68–69; Ex. 1003 ¶¶ 173, 177–178).
On the record now before us, we see merit in Patent Owner’s
argument. We agree with Patent Owner that Saidara and Malangi
contemplate different users and different environments. Id. at 47–48.
Saidara discloses a wristwatch-type monitor (Ex. 1008 ¶ 66) that may be
worn by a patient in an outpatient or home use environment, “to provide for
better treatment and control” of, e.g., glucose levels (id. ¶ 74). By contrast,
Malangi discloses a paramedic or caregiver-operated infusion pump and
blood pressure monitor to be used “during war and other critical situations.”
Ex. 1010, 1.
Given these differences, we are preliminarily unpersuaded by
Petitioner’s stated rationale for why an ordinarily skilled artisan would have
been motivated to combine the teachings of Saidara and Malangi. For
example, Petitioner asserts that modifying Saidara would have “prevent[ed]
distraction to the caregiver from ongoing audible alarms or new alarms
triggered by medical intervention, while also providing a caregiver with
intermittent warnings corresponding to the severity of a continuing or
worsening alarm condition that may require escalated medical intervention.”
Pet. 66–67 (citing Ex. 1003 ¶ 173). Similarly, Petitioner asserts that
combining the teachings of Saidara and Malangi would have “ensure[d] a
caregiver acknowledges the currency of alarms and can provide treatment
without triggering additional alarms.” Id. at 68 (citing Ex. 1003 ¶ 177). The
pertinence of these benefits, however, is unclear because Saidara’s monitor

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is worn by a user at home, distant from any caregiver. Ex. 1008 ¶ 74. We
recognize that Saidara discloses that information may be relayed from the
monitor to a “medical professional and/or [a] related caregiver” and that the
monitor may be used “under a physician’s supervision.” Id. ¶¶ 72, 74.
Petitioner does not address persuasively, however, whether such remote
caregivers would have been distracted by ongoing alarms or would have
provided treatment without triggering additional alarms, as Petitioner
alleges.
J. 	Word Count
In the Preliminary Response, Patent Owner raises an argument about
“abbreviation and spacing tricks” used by Petitioner in order to satisfy the
word count limit. Prelim. Resp. 2. In particular, Patent Owner points out
the following “tricks”: (1) the use of the abbreviation “EX1XXX” instead of
“Ex 1xxx”; (2) the use of “Baker-1” and “Baker-2” instead of “Baker 1” and
“Baker 2”, respectively; and (3) omitting the full language of the claims
from the arguments. See id. at 2 n.1. In the interest of fairness, Patent
Owner may use these conventions in preparing its Patent Owner Response.
The parties also may use these conventions for any other briefing in this
proceeding (e.g., Reply, Sur-reply, Motions to Exclude).
III. CONCLUSION
For the reasons set forth above, we determine that Petitioner has
demonstrated a reasonable likelihood of prevailing with respect to at least
one claim of the RE353 patent. We institute an inter partes review as set
forth in the Order below.

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IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
review of claims 1–25 of U.S. Patent RE47,353 E is instituted with respect
to all grounds set forth in the Petition; and
FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and
37 C.F.R. § 42.4(b), inter partes review of U.S. Patent RE47,353 E shall
commence on the entry date of this Order, and notice is hereby given of the
institution of a trial.

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FOR PETITIONER:
Rudolph A. Telscher, Jr.
Daisy Manning
Nathan P. Sportel
HUSCH BLACKWELL LLP
PTAB-RTelscher@huschblackwell.com
PTAB-DManning@huschblackwell.com
Nathan.Sportel@huschblackwell.com
FOR PATENT OWNER:
Stephen W. Larson
Jacob L. Peterson
Irfan A. Lateef
Brian C. Claassen
KNOBBE, MARTENS, OLSON, & BEAR, LLP
2swl@knobbe.com
2jup@knobbe.com
2ial@knobbe.com
2bcc@knobbe.com