PTAB

IPR2025-01250

Samsung Electronics Co Ltd v. Omni MedSci Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Physiological Measurement System
  • Brief Description: The ’533 patent describes a system for measuring physiological parameters using a wearable device. The device includes a light source with light-emitting diodes (LEDs) that generate an optical beam, which is directed at a sample (e.g., user's tissue), and a receiver to process the reflected or transmitted light.

3. Grounds for Unpatentability

Ground 1: Obviousness over Lisogurski - Claims 6, 12, and 14 are obvious over Lisogurski

  • Prior Art Relied Upon: Lisogurski (Patent 9,241,676).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the challenged claims are dependent on independent claims 5 and 13, which were previously cancelled in a prior inter partes review (IPR) as obvious over Lisogurski. Petitioner contended that Lisogurski alone teaches the additional limitations of the challenged dependent claims. For claim 6/14, Petitioner asserted that it was well-known that LEDs used in such systems typically have a bandwidth of 20-40 nm, a fact supported by the ’533 patent’s own specification. For claim 12, Petitioner asserted Lisogurski discloses using multiple LEDs (red and infrared) to generate an output beam with a plurality of wavelengths and generating an output signal by comparing the intensities of these different wavelengths to determine physiological parameters like blood oxygen saturation.
    • Motivation to Combine (for §103 grounds): Not applicable as this ground relies on a single reference. Petitioner argued that all limitations are present in Lisogurski, which describes a comprehensive physiological monitoring system.
    • Key Aspects: This ground relied heavily on the findings of the Final Written Decision (FWD) in a prior IPR (’533-IPR), arguing that collateral estoppel applies to the unpatentability of the base independent claims.

Ground 2: Obviousness over Lisogurski in view of Carlson - Claims 6, 11-12, 14, and 18 are obvious over Lisogurski in view of Carlson

  • Prior Art Relied Upon: Lisogurski (Patent 9,241,676) and Carlson (Application # 2005/0049468).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted this combination renders all challenged claims obvious. The core system was provided by Lisogurski, as established in the prior ’533-IPR. For claims 11 and 18, which require "one or more filters in front of one of more detectors," Petitioner argued Lisogurski discloses a receiver with detectors. Carlson was introduced to explicitly teach the use of optical wavelength filters in front of a photodetector in a pulse oximetry sensor to suppress environmental radiation and improve the signal-to-noise ratio.
    • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would combine Lisogurski and Carlson to improve the performance of Lisogurski’s physiological monitoring system. Both references address the problem of ambient light noise interfering with measurements. Petitioner argued a POSITA would have been motivated to incorporate Carlson's well-known technique of using filters to reduce ambient light noise in Lisogurski’s sensor, thereby improving the accuracy and reliability of its physiological measurements.
    • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success because using optical filters with photodetectors was a conventional and well-understood method for improving signal quality in the field of optical physiological monitoring.

  • Additional Grounds: Petitioner asserted that claims 6 and 14 are also obvious over Lisogurski (alone or in view of Carlson) in further view of Tam (Patent 7,029,628). Tam was introduced as additional evidence that using LEDs with a bandwidth of 20-40 nm was a common and cost-effective design choice for portable optical measurement devices.

4. Arguments Regarding Discretionary Denial

  • §325(d) Arguments: Petitioner argued that discretionary denial under 35 U.S.C. §325(d) is inappropriate because the primary references (Lisogurski, Carlson, and Tam) were never considered by the Examiner during prosecution of the ’533 patent. Therefore, the grounds raised are not the same or substantially the same as those previously presented to the Office.
  • §314(a) Fintiv Arguments: Petitioner argued that the Fintiv factors weigh strongly in favor of institution. Key arguments included that a co-pending district court case is at a very early stage, with a Markman hearing not scheduled until February 2026. Furthermore, Petitioner stipulated that if the IPR is instituted, it will not pursue the same grounds or any grounds that could have been raised in the IPR in the district court case. Petitioner emphasized that instituting the IPR would be an efficient use of Board resources, as the underlying independent claims have already been cancelled in a prior IPR based on the same primary prior art.

5. Relief Requested

  • Petitioner requests institution of an IPR and cancellation of claims 6, 11-12, 14, and 18 of the ’533 patent as unpatentable under 35 U.S.C. §103.