PTAB

IPR2025-01253

Samsung Electronics Co Ltd v. Omni MedSci Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Wearable Optical System for Physiological Monitoring
  • Brief Description: The ’790 patent is directed to a wearable optical system for measuring physiological parameters. The system comprises a wrist-worn device with near-infrared light sources, lenses, and detectors to generate an output signal that can be processed to determine physiological data and transmitted to an external device like a smartphone.

3. Grounds for Unpatentability

Ground 1: Obviousness over Lisogurski - Claim 7 is obvious over Lisogurski

  • Prior Art Relied Upon: Lisogurski (Patent 9,241,676).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Lisogurski, which discloses a physiological monitoring system with a wearable sensor, teaches nearly all limitations of claim 7. Lisogurski's sensor can be worn on a wrist and uses multiple LEDs, including near-infrared emitters, to measure parameters like blood oxygen saturation. It further describes a "dark subtraction" technique to improve the signal-to-noise ratio by generating a first signal when the LEDs are off (measuring ambient light) and a second signal when they are on, then comparing the two. Petitioner contended that Lisogurski’s disclosure of distinguishing oxyhemoglobin from hemoglobin meets the limitation of being configured to "identify an object."
    • Motivation to Combine (for §103 grounds): Petitioner argued that although Lisogurski shows some processing circuitry in a separate monitor unit, a person of ordinary skill in the art (POSITA) would have been motivated to modify the system by relocating the control, light drive, and front-end processing circuitry into the sensor itself. This motivation arose from Lisogurski’s explicit suggestion that component functionality could be combined into a single unit and from strong industry trends toward developing more compact and capable wearable sensors.
    • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success in integrating the circuitry, as it was a known design choice to improve portability and reduce component count in wearable devices.

Ground 2: Obviousness over Lisogurski in view of Carlson - Claim 7 is 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: This ground was presented as an alternative to Ground 1, primarily to address the "one or more lenses" limitation. Petitioner argued that to the extent Lisogurski does not explicitly teach lenses for directing light, Carlson provides this missing element. Carlson, which is in the same field of optical pulsoximetry, explicitly teaches using lenses as "beam-shaping elements" to direct light from an LED source into a patient's tissue. This focusing of light increases the optical signal power and thereby improves the signal-to-noise ratio of the measurement.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Carlson's lens teaching with Lisogurski's wearable sensor system to achieve the well-understood and desirable goal of improving signal quality without increasing power consumption. Because Lisogurski's sensor is a wireless, battery-powered device, improving its efficiency in this manner would have been a clear and logical design improvement.
    • Expectation of Success (for §103 grounds): The combination would have been predictable and successful, as both references relate to optical physiological sensors using LEDs, and the use of lenses to focus light is a fundamental and routine technique in optical system design.

4. Key Claim Construction Positions

  • "to identify an object": Petitioner noted that in a prior Final Written Decision (FWD) involving a related patent (the '484-FWD), the Board construed this term to mean "to recognize or establish an object as being a particular thing." Petitioner argued that Lisogurski's disclosure of a system that measures oxygen saturation—which requires distinguishing the "object" of oxyhemoglobin from other blood constituents—satisfies this limitation under the Board's prior construction. Petitioner asserted that no further construction was necessary for the purposes of the inter partes review (IPR).

5. Arguments Regarding Discretionary Denial

  • §325(d) - Same Art or Arguments: Petitioner argued against discretionary denial under 35 U.S.C. §325(d), asserting that the grounds were not substantially the same as those considered during prosecution. Although Lisogurski and Carlson were cited in an Information Disclosure Statement (IDS) for a related application, the Examiner for the ’790 patent did not cite or substantively consider them. Petitioner contended that the Examiner materially erred by allowing the claim when the Board had already found identical or substantially identical limitations unpatentable over the same art in prior IPRs ('533-IPR and '484-IPR).
  • §314(a) - Fintiv Factors: Petitioner argued that discretionary denial under Fintiv was not warranted. The parallel district court litigation was in its early stages, with a Markman hearing not scheduled until February 2026, making a stay pending the IPR outcome likely. Furthermore, Petitioner stipulated that if the IPR is instituted, it will not pursue the same grounds or any ground that could have been reasonably raised in the IPR in the district court action.

6. Relief Requested

  • Petitioner requests institution of an IPR and cancellation of claim 7 of Patent 12,193,790 as unpatentable.