PTAB

IPR2025-01249

Samsung Electronics Co Ltd v. Omni MedSci Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Diagnostic System Using Optical Measurements
  • Brief Description: The ’868 patent relates to a diagnostic system comprising a light source that uses output light beams to perform physiological measurements on a user. The data is transmitted to and processed by software on a control system and a remote host.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 7, 10-11, and 14 over Mault

  • Prior Art Relied Upon: Mault (Application # 2003/0208113).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Mault discloses all limitations of independent claim 7. Mault described a blood glucose management system featuring a "glucose sensor" with a semiconductor laser or LED (the claimed light source and lens system) placed against a user's body. This sensor transmitted measurement data to a personal digital assistant (PDA), which served as the claimed control system. The PDA included a software program, a display (a touch-screen was argued to be an obvious implementation), GPS capability (location sensor), and a wireless transceiver. The PDA then wirelessly transmitted physiological data to a "remote server system," which functioned as the claimed host for data storage, processing, and generating user feedback. Petitioner further contended that Mault taught the dependent claim limitations, including combining the PDA with a headset (claim 10), using "voice recognition software" (claim 11), and providing audible feedback via an "earring-like device" (claim 14).
    • Motivation to Combine (for §103 grounds): Not applicable as this ground is based on a single reference anticipating or rendering all elements obvious.
    • Expectation of Success (for §103 grounds): Not applicable.

Ground 2: Obviousness of Claim 9 over Mault in view of Mitsui

  • Prior Art Relied Upon: Mault (Application # 2003/0208113) and Mitsui (JP Publication # 2000074829A).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground asserted that the combination of Mault and Mitsui rendered claim 9 obvious. Claim 9 adds the requirement that the system uses a "spectroscopic procedure" based on a "comparison of amplitudes at a plurality of associated wavelengths." While Mault disclosed using "spectroscopic techniques" generally, Mitsui specifically taught a glucose sensor that determines glucose levels by analyzing the "ratio of the light intensities" at a plurality of different wavelengths transmitted through or reflected by a living body. Petitioner argued that light intensity is directly correlated to amplitude, thus meeting the claim limitation.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Mitsui’s specific technique with Mault’s system to improve the accuracy and reliability of the blood glucose measurements. Mitsui taught that comparing multiple wavelength intensities makes the measurement "less susceptible to variations" and enables more "accurate measurements."
    • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success because both Mault and Mitsui operated in the same technical field of non-invasive, light-based physiological monitoring, and combining them was a predictable application of a known technique to improve a known system.

Ground 3: Obviousness of Claims 8 and 13 over Mault and Additional Art

  • Prior Art Relied Upon: Mault (Application # 2003/0208113), Pologe (Patent 5,891,022), and Kiani (Patent 6,526,300).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed dependent claims requiring a multiplexer (claim 8) and a proximity sensor (claim 13).
    • For claim 8, Petitioner argued that while Mault taught a light source with at least one semiconductor diode, Pologe taught a photoplethysmographic system using a "wavelength division multiplexing (WDM) coupler" to combine light signals from a plurality of emitters (like LEDs) into a single multiplexed signal.
    • For claim 13, Petitioner argued that Kiani disclosed a pulse oximeter with a "contact sensor" that detected when the device's optical probe was "partially or completely dislodged from the patient." This contact sensor functioned as the claimed proximity sensor.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Pologe’s multiplexer with Mault’s sensor to reduce system complexity, lower implementation costs, and improve signal transmission efficiency, as explicitly taught by Pologe. A POSITA would combine Kiani’s contact sensor with Mault’s physiological sensor to improve measurement accuracy by detecting when the sensor was dislodged, thereby mitigating erroneous readings caused by improper placement.
    • Expectation of Success (for §103 grounds): Success was predictable, as using multiplexers with LEDs (per Pologe) and contact sensors on wearable medical devices (per Kiani) were well-known, routine design choices in the art of physiological monitoring.
  • Additional Grounds: Petitioner asserted additional obviousness challenges based on various combinations of Mault, Mitsui, Pologe, and Kiani to address the full scope of challenged claims 7-11 and 13-14.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under §325(d) because the primary prior art references (Mault, Mitsui, Pologe, Kiani) were never cited or considered by the examiner during prosecution. Petitioner also contended that the examiner's stated reason for allowance relied on a "waveguide structure" limitation from a different independent claim, which is absent from the challenged claims.
  • Petitioner argued against discretionary denial under Fintiv because the co-pending district court litigation was in a very early stage, with a claim construction hearing scheduled for February 2026. Petitioner also provided a stipulation that, if the IPR is instituted, it will not pursue in the district court any ground that was raised or reasonably could have been raised in the IPR.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 7-11 and 13-14 of the ’868 patent as unpatentable under 35 U.S.C. §103.