Apple Inc. v. Omni Medsci, Inc.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
APPLE INC.,
Appellant
v.
OMNI MEDSCI, INC.,
Appellee
______________________
2023-1034
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2021-
00453.
______________________
Decided: June 21, 2024
______________________
J EFFREY P AUL K USHAN, Sidley Austin LLP, Washing-
ton, DC, argued for appellant. Also represented by T HOMAS
ANTHONY BROUGHAN, III, J OSHUA J OHN F OUGERE ; MICHAEL
ROBERTS , Dallas, TX.
T HOMAS A. L EWRY , Brooks Kushman PC, Royal Oak,
MI, argued for appellee. Also represented by J OHN S.
L EROY , CHRISTOPHER C. SMITH .
______________________
Case: 23-1034 Document: 44 Page: 1 Filed: 06/21/2024

-- 1 of 14 --

APPLE INC. v. OMNI MEDSCI , INC. 2
Before REYNA and CUNNINGHAM , Circuit Judges, and
ALBRIGHT , District Judge1.
ALBRIGHT , District Judge.
Appellant Apple Inc. appeals from a Final Written De-
cision of the Patent Trial and Appeal Board finding Apple
failed to show that claims 3–6 and 8–14 of U.S. Patent No.
10,517,484 were unpatentable.2 Those claims were upheld
because the Board found prior art did not disclose the claim
limitation “configured to identify an object” (the “identify-
ing limitation”). In contrast, the Board found claim 16 un-
patentable, which is like upheld claims 3 and 8 except for
the claim limitation “configured to detect an object” (the
“detecting limitation”).
Apple appeals on two grounds, one substantive and one
procedural. First, Apple claims that the Board incorrectly
construed the identifying limitation. Second, Apple argued
below that U.S. Patent No. 9,241,676 (“Lisogurski”) and
U.S. Patent No. 8,108,036 (“Tran”) disclose the identifying
limitation even under appellee Omni MedSci, Inc.’s pro-
posed construction (the “alternative argument”). Apple
faults the Board for considering this an improper new reply
argument. Because the Board erred only in disregarding
the alternative argument, we affirm-in-part, vacate-in-
part, and remand to the Board for further consideration.
1 Honorable Alan D Albright, District Judge, United
States District Court for the Western District of Texas, sit-
ting by designation.
2 The Board found unpatentable several other claims
of the ’484 patent. However, appellee Omni MedSci, Inc.
does not appeal any aspect of the Final Written Decision,
including the Board’s unpatentability finding on claim 16
or its claim constructions.
Case: 23-1034 Document: 44 Page: 2 Filed: 06/21/2024

-- 2 of 14 --

APPLE INC. v. OMNI MEDSCI , INC. 3
BACKGROUND
I
Omni MedSci, Inc. is the assignee of U.S. Patent No.
10,517,484, entitled “Semiconductor Diodes-based Physio-
logical Measurement Device with Improved Signal-to-
Noise Ratio.” The patent is generally directed to a “weara-
ble device includ[ing] a measurement device to measure a
physiological parameter adapted to be placed on a wrist or
an ear of a user.” ’484 patent, at [57]. The wearable device
measures the physiological parameter by emitting light
and analyzing the light that is reflected back. See id. The
specification has sections corresponding to various blood
constituents of potential interest, such as glucose, ketones,
and hemoglobin A1c. Id. at 11:20; 13:1; 14:23.
Claims 3, 8, and 16 are relevant to the arguments pre-
sented in this appeal. Although each depends on a differ-
ent independent claim, none of the limitations of any
independent claim—or any claim upon which claims 3, 8,
or 16 depend—are at issue. The three claims state:
3. The system of claim 2, wherein the wearable
device is at least in part configured to identify an
object, and to compare a property of at least some of
the output signal to a threshold.
8. The system of claim 7, wherein the wearable
device is at least in part configured to identify an
object, and a property of at least some of the output
signal is compared by at least one of the wearable
device, the smart phone or tablet to a threshold.
16. The system of claim 15, wherein the weara-
ble device is at least in part configured to detect an
object, and a property of at least some of the output
signal is compared to a threshold.
’484 patent, 37:43–46; 38:63–67; 40:33–36 (emphases
added).
Case: 23-1034 Document: 44 Page: 3 Filed: 06/21/2024

-- 3 of 14 --

APPLE INC. v. OMNI MEDSCI , INC. 4
II
A
Apple petitioned to institute an inter partes review of
claims 1–23 of the ’484 patent. J.A. 203, 220. One ground
is relevant to this appeal. Apple argued that the combina-
tion of prior art references Lisogurski, Tran, and U.S. Pa-
tent Application Publication No. 2005/00494468
(“Carlson”) rendered claims 3, 8, and 16 (among others) ob-
vious. J.A. 220. For the identifying and detecting limita-
tions, Apple argued that Lisogurski discloses sending an
error signal when its sensor has fallen off the subject—
which requires identifying and detecting when an object,
such as a wrist or an ear, is in range of the sensor. J.A.
275. For the limitation “configured . . . to compare a prop-
erty of at least some of the output signal to a threshold,”
the petition claimed that Lisogurski discloses comparing
detected signals, such as blood oxygen saturation, to
thresholds or target values. J.A. 276. Similarly, the peti-
tion argued that Tran discloses monitoring health infor-
mation, such as pulse oximetry measurements, and
comparing it to user-provided parameters for generating
health alerts. J.A. 271, 276. Neither the petition nor the
patent owner’s preliminary response discussed the identi-
fying or detecting limitations in their claim construction
sections. J.A. 232–34; 4761–62.
The Board instituted the IPR. J.A. 5162. The institu-
tion decision did not construe the identifying and detecting
limitations. See J.A. 5169–70.
Omni’s patent owner response disputed, for the first
time, the construction of the “identify an object” limitation
in Claims 3 and 8 and the “detect an object” limitation in
Claim 16. J.A. 5242–45. For the “identify an object” limi-
tation, Omni proposed the construction “to recognize or es-
tablish an object as being a particular thing.” J.A. 5244.
For the “detect an object” limitation, Omni proposed the
construction “to discover or notice the existence or presence
Case: 23-1034 Document: 44 Page: 4 Filed: 06/21/2024

-- 4 of 14 --

APPLE INC. v. OMNI MEDSCI , INC. 5
of something.” J.A. 5245. The proposed constructions were
based off the Random House Kernerman Webster’s College
Dictionary (2010). J.A. 5242; 5244. In both cases, Omni
argued that the ’484 patent claims and specification con-
firmed the dictionary-based plain meaning. J.A. 5242–45.
In its reply brief, Apple argued that the terms of the
identifying and detecting limitations were commonly un-
derstood and needed no construction. J.A. 5378. To the
extent construction was necessary, Apple proposed the
same construction for both limitations: “to discover or de-
termine the existence, presence, or fact of an object.” J.A.
5378–79. For the “identify an object” limitation, Apple ar-
gued that its construction aligned with the claims and spec-
ification, which use the term “identify” to confirm that an
object is present or not, rather than to take action depend-
ent on what the object is. J.A. 5379. Apple argued that
Lisogurski discloses both the identifying and detecting an
object limitations based on Apple’s proposed construction.
J.A. 5381–82.
Apple also argued in its reply brief that Lisogurski and
Tran disclose the identifying limitation even under Omni’s
proposed construction. J.A. 5383. Apple pointed to Li-
sogurski and Tran’s techniques for measuring blood oxygen
saturation and other blood constituents, id., which Apple
relied on in the petition to show “compar[ing] a property of
at least some of the output signal to a threshold.” J.A. 275–
76. Apple argued that measuring blood constituents re-
quires identifying and quantifying them, which Lisogurski
and Tran perform using the same reflected light measuring
technique disclosed in the ’484 patent. J.A. 5383.
B
The Board issued a Final Written Decision finding
claim 16 unpatentable but refusing to find claims 3–6 and
8–14 unpatentable. J.A. 61. Starting with claim construc-
tion, the Board construed “to identify an object” as “to rec-
ognize or establish an object as being a particular thing”
Case: 23-1034 Document: 44 Page: 5 Filed: 06/21/2024

-- 5 of 14 --

APPLE INC. v. OMNI MEDSCI , INC. 6
and “to detect an object” as “to discover or notice the exist-
ence or presence of something.” J.A. 10. The Board rested
its analysis on the presumption that different claim terms
are presumed to have different meanings. J.A. 9; see Sim-
pleAir, Inc. v. Sony Ericsson Mobile Commc’ns AB, 820
F.3d 419, 431 (Fed. Cir. 2016). The Board rejected Apple’s
arguments for applying the same meaning—the dictionary-
based meaning of “detect”—to both limitations. Id. The
Board noted the different dictionary definitions for “iden-
tify” and “detect” and issued the constructions above, which
are “consistent with the dictionary definitions.” J.A. 9–10.
Turning to the petition’s grounds, the Board held that
the combination of Lisogurski, Carlson, and Tran rendered
claim 16 obvious. J.A. 54. Applying its construction of
claim 16’s detecting limitation, the Board agreed with Ap-
ple that Lisogurski discloses the detecting limitation by
recognizing when its sensor has fallen off the subject,
which implies the ability to recognize the subject’s pres-
ence. J.A. 50–51.
In contrast, the Board held that the combination of Li-
sogurski, Carlson, and Tran did not render claims 3 or 8
obvious. J.A. 54. The Board recited Apple’s argument in
its reply brief that Lisogurski discloses the identifying lim-
itation because “Lisogurski and Tran each teach tech-
niques for measuring blood oxygen saturation and other
blood constituents.” J.A. 51. The Board further recited
Omni’s sur-reply counterarguments that “measuring” is
not “identifying,” and that Apple’s reply argument was pro-
cedurally improper. Id. The Board ultimately sided with
Omni’s position “that the Petition does not sufficiently ar-
ticulate support for Petitioner’s assertions.” Id. The Board
cited the discrepancy between Apple’s petition arguments,
which focused on comparing signals to thresholds, and the
identifying limitation as construed, which focused on rec-
ognizing or establishing objects to be particular things.
J.A. 51–52.
Case: 23-1034 Document: 44 Page: 6 Filed: 06/21/2024

-- 6 of 14 --

APPLE INC. v. OMNI MEDSCI , INC. 7
Apple timely appealed. We have jurisdiction under 28
U.S.C. § 1295(a)(4)(A).
STANDARD OF REVIEW
We review the Board’s ultimate claim construction de
novo. Google LLC v. EcoFactor, Inc., 92 F.4th 1049, 1054
(Fed. Cir. 2024). We review any underlying fact findings
for substantial evidence. Id. We review for abuse of dis-
cretion the Board’s decision to disregard a reply argument
as exceeding the proper scope. Axonics, Inc. v. Medtronic,
Inc., 75 F.4th 1374, 1380 (Fed. Cir. 2023).
D ISCUSSION
I
We begin with claim construction. While the Board
could have done more to justify its reasoning, we neverthe-
less uphold its construction on appeal. “We review the
Board’s claim construction based on intrinsic evidence de
novo . . . .” Dionex Softron GmbH v. Agilent Techs., Inc., 56
F.4th 1353, 1358 (Fed. Cir. 2023). Under this standard,
and based on the intrinsic evidence before us, we affirm the
Board’s construction of the claim limitation “identify an ob-
ject” as “to recognize or establish an object as being a par-
ticular thing.”
Well-settled claim construction principles govern this
dispute. “Different claim terms are presumed to have dif-
ferent meanings.” Bd. of Regents of the Univ. of Tex. Sys.
v. BENQ Am. Corp., 533 F.3d 1362, 1371 (Fed. Cir. 2008).
A party, however, can rebut that presumption in the con-
text of a particular patent. See, e.g., Powell v. Home Depot
U.S.A., Inc., 663 F.3d 1221, 1231–32 (Fed. Cir. 2011). For
example, in the past we have found that different terms in
the same patent have the same meaning because they have
been used interchangeably. See, e.g., Baran v. Med. Device
Techs., Inc., 616 F.3d 1309, 1316 (Fed. Cir. 2010); Tehrani
v. Hamilton Med., Inc., 331 F.3d 1355, 1361 (Fed. Cir.
2003).
Case: 23-1034 Document: 44 Page: 7 Filed: 06/21/2024

-- 7 of 14 --

APPLE INC. v. OMNI MEDSCI , INC. 8
Here, Apple argues that the Board erred in construing
the limitation “identify an object” in claims 3 and 8 as “to
recognize or establish an object as being a particular
thing.” Appellant Br. 30. According to Apple, this claim
limitation should have the same meaning as claim 16’s “de-
tect an object” limitation, which is “to discover or determine
the existence, presence, or fact of an object.” Appellant Br.
26. According to Apple, the patent uses the terms “iden-
tify” and “detect” interchangeably, and thus this evidence
rebuts the presumption that different claim terms have dif-
ferent meaning. Apple’s attempts to rebut this presump-
tion, as discussed below, fail.
First, Apple argues that because claims 3 and 8 paral-
lel claim 16 except for using “identify” versus “detect,”
these terms are interchangeable. But that turns the pre-
sumption of different meanings on its head. It was within
the patentee’s power to draft claims 3, 8, and 16 to all claim
“detecting an object.” Cf. Aspex Eyewear, Inc. v. Marchon
Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012) (“The
fact that the two adjacent claims use different terms in par-
allel settings supports the district court’s conclusion that
the two terms were not meant to have the same mean-
ing . . . .”). They did not do so. Thus, we reject Apple’s ar-
gument.
Second, Apple argues that claims 3 and 8, like claim
16, only require the claimed wearable device to discover or
determine the existence, presence, or fact of an object—i.e.,
detecting said object. Appellant Br. 33. According to Ap-
ple, nothing in claims 3 and 8 requires the claimed weara-
ble device to act based on the determined identity of an
object. Id. But “identify” must be given the full scope of its
plain and ordinary meaning absent lexicography or dis-
claimer, neither of which Apple alleges. See Thorner v.
Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed.
Cir. 2012). Accordingly, when claims 3 and 8 require the
claimed device to “identify an object,” the claims require a
determination of the identity of an object, even if the claims
Case: 23-1034 Document: 44 Page: 8 Filed: 06/21/2024

-- 8 of 14 --

APPLE INC. v. OMNI MEDSCI , INC. 9
never do anything with that identity. For these reasons,
claims 3 and 8’s limitation “identify an object” is not inter-
changeable with the “detect an object” limitation in claim
16, no matter what the other limitations of claims 3 and 8
do.
Apple next argues that the specification uses the terms
“identify” and “detect” interchangeably. Appellant Br. 33.
We reject Apple’s position. Apple refers to the various
blood constituents discussed in the specification as the
claimed “objects” that claims 3 and 8 “identify” and that
claim 16 “detects.”3 Apple notes that these constituents are
“identif[ied]” in some sections and “detect[ed]” in others
through the same technique: measuring reflected light and
comparing the results against known spectra. Apple em-
phasizes a paragraph on cholesterol that discusses “de-
tect[ing]” it in the first sentence and “identify[ing]” its
concentration in the last sentence. ’484 patent, 15:31–48.
The problem with Apple’s argument is that it is a cobbled
together generalization of various sections of the specifica-
tion, and one that often ignores distinctions in language at
that. For example, the discussion of “detect[ing]” glucose
that Apple highlights is actually about detecting glucose
lines in a spectrum. Id. at 18:46–52. Overall, we reject
Apple’s argument that the specification consistently and in-
terchangeably refers to “identify” and “detect” in a manner
sufficient to overcome the usual presumption that those
different terms have different meanings.
3 Omni challenges Apple’s specification citations as
improper new evidence on appeal. Appellee Br. 19–20. We
reject this challenge, for “[t]he doctrine of waiver does not
preclude a party from supporting its original claim con-
struction with new citations to intrinsic evidence of record.”
Seabed Geosolutions (US) Inc. v. Magseis FF LLC, 8 F.4th
1285, 1289 (Fed. Cir. 2021).
Case: 23-1034 Document: 44 Page: 9 Filed: 06/21/2024

-- 9 of 14 --

APPLE INC. v. OMNI MEDSCI , INC. 10
Finally, Apple separately argues that the Board’s claim
construction is erroneous because it does not track the law.
According to Apple, the Board improperly relied on extrin-
sic dictionary definitions rather than intrinsic evidence
when construing the “identify an object” limitation. Appel-
lant Br. 34. Apple cites the well-known principle that ex-
trinsic evidence, such as dictionary definitions, is less
significant than and cannot be used to contradict intrinsic
evidence. Phillips v. AWH Corp., 415 F.3d 1303, 1317,
1322–23 (Fed. Cir. 2005) (en banc). While that is a correct
recitation of the law, it is beside the point. As previously
noted, we determine that the Board’s construction of the
“identify an object” limitation is correct based on the intrin-
sic evidence.
In conclusion, we affirm the Board’s construction that
“identify an object” in claims 3 and 8 means “to recognize
or establish an object as being a particular thing.” Apple
has not rebutted the presumption that “identifying an ob-
ject” and “detecting an object” have different meanings.
Because that is Apple’s only claim construction challenge,
we affirm the Board’s construction.
II
We turn next to Apple’s procedural argument. Apple
argues that the Board abused its discretion when it refused
to consider Apple’s arguments in its reply brief. Appellant
Br. 38. Specifically, Apple’s arguments in its reply brief
concerning the Lisogurski, Carlson, and Tran references
were made in response to Omni’s newly raised claim con-
struction of “identify an object” in its patent owner re-
sponse. Appellant Br. 38–40. We agree with Apple.
After briefing in this appeal was completed, we decided
Axonics, Inc. v. Medtronic, Inc., 75 F.4th 1374 (Fed. Cir.
2023). That opinion crystallized and distilled principles al-
ready inherent in our past decisions. The rule the Axonics
court stated squarely governs. Accordingly, we find the
Case: 23-1034 Document: 44 Page: 10 Filed: 06/21/2024

-- 10 of 14 --

APPLE INC. v. OMNI MEDSCI , INC. 11
Board abused its discretion in refusing to consider Apple’s
alternative argument.
In Axonics, this Court held that “where a patent owner
in an IPR first proposes a claim construction in a patent
owner response, a petitioner must be given the opportunity
in its reply to argue and present evidence of anticipation or
obviousness under the new construction, at least where it
relies on the same embodiments for each invalidity ground
as were relied on in the petition.” 75 F.4th at 1384. The
Axonics Court derived support for this rule from a discus-
sion of past Federal Circuit precedent. See id. at 1381–83.
Two cases are of particular importance here. First, SAS
Institute, Inc. v. ComplementSoft, LLC, 825 F.3d 1341,
1351 (Fed. Cir. 2016), rev’d on other grounds sub nom. SAS
Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018), held that the
PTAB may not change a claim construction between insti-
tution and Final Written Decision without giving the par-
ties reasonable notice and an opportunity to argue under
the new construction. Second, Hamilton Beach Brands,
Inc. v. f’real Foods LLC, 908 F.3d 1328, 1338–39 (Fed. Cir.
2018), rejected a challenge to a Final Written Decision’s
adoption of constructions first proposed in a patent owner
response because the petitioner had an opportunity to re-
spond. See Axonics, 75 F.4th at 1382 (“[W]e reiterated the
rule that, under the APA, the Board cannot adopt a new
claim construction without giving the petitioner an oppor-
tunity to respond. But we held that those requirements
had been met because the petitioner was able to respond in
its reply . . . .”). In light of these and other cases, the Ax-
onics Court held that the PTAB was required to consider
the petitioner’s new argument and evidence on anticipation
and obviousness raised in the reply, since the patent owner
had advanced a new claim construction position in its pa-
tent owner response and the new patentability argument
was responsive to the construction. See id. at 1378–79,
1383–84.
Case: 23-1034 Document: 44 Page: 11 Filed: 06/21/2024

-- 11 of 14 --

APPLE INC. v. OMNI MEDSCI , INC. 12
Under both Axonics and earlier precedents, the Board
abused its discretion here in refusing to consider Apple’s
reply argument. Omni’s patent owner response offered
specific proposed constructions for the identifying and de-
tecting limitations for the first time. Compare J.A. 5242–
45, with J.A. 4761–62. Apple responded to this argument
by citing embodiments relied on by the Lisogurski/Carl-
son/Tran ground in the petition. See J.A. 5383; 276. And
the Board, after having said nothing about the identifying
limitation’s construction in the institution decision,
adopted Omni’s proposed construction. See J.A. 10, 5169–
70. As in Axonics, the patent owner here proposed a new
construction for the first time in the patent owner re-
sponse. See 75 F.4th at 1378, 1384. As in Hamilton Beach,
the parties and the Board did not discuss the construction
of the relevant limitation during the institution phase. See
908 F.3d at 1335. And as in SAS, the Board adopted a dif-
ferent claim construction in its Final Written Decision
without giving the petitioner an opportunity to present ar-
gument under that construction. See 825 F.3d at 1351.
The Board therefore disregarded our consistent caselaw
when disposing of the alternative argument.
Omni’s attempts to defend the Board’s decision are un-
persuasive. In the briefs, Omni relied on two main prece-
dential cases: Acceleration Bay, LLC v. Activision Blizzard
Inc., 908 F.3d 765 (Fed. Cir. 2018), and Wasica Finance
GmbH v. Continental Automotive Systems, Inc., 853 F.3d
1272 (Fed. Cir. 2017). Both cases are distinguishable.
While the petitioner in Acceleration Bay raised new evi-
dence of obviousness in response to patent owner’s con-
struction of a term, there were no indicators that said
construction was proposed for the first time in a patent
owner response. See 908 F.3d at 775. Wasica involved a
reply that “effectively abandoned its petition in favor of a
new [obviousness] argument.” 853 F.3d at 1286–87. Apple
has done nothing so dramatic here. Compare J.A. 275–276,
with J.A. 5383.
Case: 23-1034 Document: 44 Page: 12 Filed: 06/21/2024

-- 12 of 14 --

APPLE INC. v. OMNI MEDSCI , INC. 13
At oral argument, Omni claimed it has always main-
tained that “identifying” should have its plain and ordinary
meaning: the dictionary-based definition in the patent
owner’s response. But the patent owner in Axonics also ar-
gued that its two-input construction was the plain and or-
dinary meaning of the relevant limitations. Patent
Owner’s Response at 2, Axonics Modulation Techs., Inc. v.
Medtronic, Inc., No. IPR2020-00680 (P.T.A.B. Dec. 22,
2020) (“[T]he language of the claims and the teaching of the
’758 patent specification . . . compel the plain meaning of
these claims as requiring two separate inputs . . . .”). And
it did so after failing to discuss the construction of those
limitations in the patent owner’s preliminary response,
just like Omni. See Axonics, 75 F.4th at 1378. Omni also
lays blame at Apple’s feet, claiming that Apple’s reply
sought to fix an error in the petition’s treatment of claim
16 and thereby started this dispute. But Omni’s focus on
Apple’s actions is misplaced. Axonics instead puts the fo-
cus on what patent owners have done. See id. at 1384. At
the preliminary response stage, Omni did not propose a
construction for “identify an object.” Post-institution,
Omni proposed that “identify an object” should mean “to
recognize or establish an object as being a particular
thing.” That constituted a claim construction first pro-
posed in the response, so Apple was entitled to respond to
it. Finally, Omni warns of petitioners sandbagging patent
owners with new claim constructions. This is ironic, given
that Axonics was decided based on concerns of patent own-
ers sandbagging petitioners. Id. Omni’s fears are un-
founded. Petitioners who hold their best claim
construction arguments back for reply don’t just need to
worry about the Board disregarding them as procedurally
improper—they also worry about the Board refusing to in-
stitute the petition. We therefore reject Omni’s arguments.
We conclude that the Board abused its discretion in not
considering Apple’s argument properly raised in reply in
response to Omni’s construction for the identifying
Case: 23-1034 Document: 44 Page: 13 Filed: 06/21/2024

-- 13 of 14 --

APPLE INC. v. OMNI MEDSCI , INC. 14
limitation. We do not address the merit of this argument
on this record. We leave such issues for the Board to con-
sider on remand.
III
Apple also appeals the Board’s finding that Apple
failed to show that claims 4–6 and 9–14 were unpatentable.
The sole reason for this holding was that Apple had not
shown the unpatentability of claims 3 and 8, on which
claims 4–6 and 9–14 depend.4 See J.A. 49, 52, 55, 59. Be-
cause we find the Board abused its discretion in its analysis
of claims 3 and 8, we also find the Board’s analysis of claims
4–6 and 9–14 to contain the same error.
CONCLUSION
We have considered the parties’ remaining arguments
and find them unpersuasive. While we affirm the Board’s
construction of the limitation “identify an object” in claims
3 and 8, we vacate the Board’s Final Written Decision re-
garding claims 3–6 and 8–14 of the ’484 patent, and re-
mand for further proceedings consistent with this opinion.
AFFIRMED-IN-PART, VACATED-IN-PART AND
REMANDED
COSTS
No costs.
4 Some of these claims were subject to different
grounds with additional prior art. See J.A. 220. However,
because Apple had not alleged that the additional prior art
disclosed the identifying limitation, the Board nevertheless
hinged its holding on Apple’s failure to show the unpatent-
ability of claims 3 and 8. See J.A. 55, 59.
Case: 23-1034 Document: 44 Page: 14 Filed: 06/21/2024

-- 14 of 14 --