`
`
`Paper No. 15
`Entered: January 8, 2021
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SOTERA WIRELESS, INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`____________
`
`IPR2020-01015
`Patent 9,795,300 B2
`____________
`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2020-01015
`Patent 9,795,300 B2
`
`
`
`1. Introduction
`On January 7, 2021, a conference call was held between counsel for
`the respective parties and Judges Cocks and Kinder.1 Petitioner, Sotera
`Wireless, Inc., was represented by Nathan Sportel and Daisy Manning.
`Patent Owner, Masimo Corporation, was represented by Sheila Swaroop.
`Petitioner had requested the call to discuss authorization to file a motion to
`correct what Petitioner characterized as typographical errors in the Petition.
`
`
`
`2. Discussion
`During the call, Petitioner expressed that it was seeking to correct
`certain typographical errors, numbering around a dozen, directed to such
`matters as cross-referencing mistakes and misnumbered reference characters
`appearing in the Petition. In e-mail correspondence to Board personnel,
`Petitioner had initially requested a conference call to discuss authorization to
`file a motion to submit supplemental information, but had subsequently
`contacted the Board to also discuss authorization to file a motion pursuant to
`37 C.F.R. § 104(c).2 The panel members noted that a motion to submit
`supplemental information arising under 37 C.F.R. § 123 did not appear to be
`the correct vehicle for the relief that Petitioner seeks and that a motion under
`37 C.F.R. § 104(c) appeared to more appropriate. Patent Owner objected to
`any such motion on several grounds including that it is not clear as to the
`types of alleged mistakes that Petitioner is seeking to identify or change, and
`
`
`1 Judge Chagnon was unavailable for the call. In connection with this Order,
`reference to “the panel members” is to Judges Cocks and Kinder.
`2 37 C.F.R. § 104(c) reads “A motion may be filed that seeks to correct a
`clerical or typographical mistake in the petition. The grant of such a motion
`does not change the filing date of the petition.”
`2
`
`
`
`
`
`
`IPR2020-01015
`Patent 9,795,300 B2
`
`
`Petitioner waited more than three and a half months before making its
`request. Patent Owner expressed that it may be prejudiced if the motion is
`authorized.
`The panel members noted that the purpose of a motion under § 104(c)
`would be to provide clarity to both the panel and Patent Owner as to the
`specific nature of the typographical errors that Petitioner was seeking to
`identify and correct. The panel members noted that were they to authorize
`Petitioner’s motion, the panel members would also authorize an Opposition
`which would provide Patent Owner the opportunity to express what
`prejudice, if any, it may face should the motion be granted.
`After conferring, the panel members authorized Petitioner to file a
`motion under 37 C.F.R. § 104(c) of no more than five pages and due no later
`than January 14, 2021. The panel members also authorized Patent Owner to
`file an opposition to the motion of no more than five pages and due no later
`than one week from the filing of any motion.3
`It is so ORDERED.
`
`
`
`3 On the call, both parties expressed that the noted briefing schedule and
`page limits were adequate.
`
`3
`
`
`
`
`
`
`
`
`IPR2020-01015
`Patent 9,795,300 B2
`
`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:
`
`Sheila Swaroop
`Irfan A. Lateef
`Benjamin Everton
`Brian C. Claassen
`KNOBBE, MARTENS, OLSON, & BEAR, LLP
`2sns@knobbe.com
`2ial@knobbe.com
`2bje@knobbe.com
`2bcc@knobbe.com
`
`
`
`
`
`
`
`
`4
`
`
`
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