Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 31
`Date: June 10, 2021
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SOTERA WIRELESS, INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`____________
`
`IPR2020-00912 Patent 10,213,108 B21
`IPR2020-00954 Patent 9,788,735 B2
`IPR2020-01015 Patent 9,795,300 B2
`IPR2020-01054 Patent 9,872,623 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`KINDER, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. §42.5
`
`
`1 This Order applies to each of the above-listed proceedings. We exercise
`our discretion to issue one Order to be filed in each proceeding. The parties
`are not authorized to use this heading style in any subsequent papers.
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 31
`Date: June 10, 2021
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SOTERA WIRELESS, INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`____________
`
`IPR2020-00912 Patent 10,213,108 B21
`IPR2020-00954 Patent 9,788,735 B2
`IPR2020-01015 Patent 9,795,300 B2
`IPR2020-01054 Patent 9,872,623 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`KINDER, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. §42.5
`
`
`1 This Order applies to each of the above-listed proceedings. We exercise
`our discretion to issue one Order to be filed in each proceeding. The parties
`are not authorized to use this heading style in any subsequent papers.
`
`
`
`IPR2020-00912 Patent 10,213,108 B2
`IPR2020-00954 Patent 9,788,735 B2
`IPR2020-01015 Patent 9,795,300 B2
`IPR2020-01054 Patent 9,872,623 B2
`
`
`
`
`Patent Owner contacted the Board by e-mail requesting authorization
`to file a motion to strike in each captioned proceeding. A telephonic
`conference was held on June 3, 2021, with Judges Cocks, Chagnon, and
`Kinder, and counsel for the parties. Patent Owner filed a copy of the
`telephonic transcript as an exhibit in each proceeding.2
`Patent Owner asserted that, in each proceeding, Petitioner’s reply
`included new theories, in violation of 37 C.F.R. § 42.23(b). Patent Owner
`seeks to strike the purported “new rationales for obviousness that were not in
`the petition.” Ex. 2037, 6:19–20. Further, Patent Owner contends that
`Petitioner improperly identifies “additional parts of the prior art references
`that were never included in the Petition,” as well as relying on entirely new
`references. Id. at 7:1–10. Patent Owner alleges “[t]here is a change in the
`obviousness argument,” including “new motivations to combine.” Id.
`Petitioner disagrees with Patent Owner’s contentions regarding the
`scope of the reply briefs and alleged new evidence. See id. at 10:10–12:5. It
`is “Petitioner’s position that the reply and the expert in reply do not add any
`new argument or any new evidence,” and “[t]here is no new grounds in the
`reply, [and] there is no new combinations.” Id. at 10:11–22. Petitioner
`further alleges that the newly cited references were proper rebuttal argument
`“to show things like the state of the art at the time of invention.” Id.
`
`
`2 For example, Exhibit 2037 in IPR2020-00912. Representative citations are
`provided for IPR2020-00912, with an understanding that identical papers
`have been filed in each proceeding.
`
`2
`
`
`
`IPR2020-00912 Patent 10,213,108 B2
`IPR2020-00954 Patent 9,788,735 B2
`IPR2020-01015 Patent 9,795,300 B2
`IPR2020-01054 Patent 9,872,623 B2
`
`
`Our Rules explain that “[a] reply may only respond to arguments
`raised in the corresponding . . . patent owner response, or decision on
`institution.” 37 C.F.R. § 42.23(b). Indeed, a reply “that raises a new issue
`or belatedly presents evidence may not be considered.” See Patent Trial and
`Appeal Board Consolidated Trial Practice Guide, 74 (Nov. 2019)3. For
`example, our Trial Practice Guide explains that “[e]xamples of indications
`that a new issue has been raised in a reply include new evidence necessary to
`make out a prima facie case for the patentability or unpatentability of an
`original or proposed substitute claim, such as newly raised rationale to
`combine the prior art references that was not expressed in the petition.” Id.
`We decline, at this time, to grant Patent Owner’s request to file
`motions to strike in these proceedings. As stated during the telephone
`conference, other avenues exist for the Patent Owner to address its concerns.
`See Ex. 2037, 3:13–5:16 (“parties are as a matter of right allowed a surreply,
`and then you also have the motions to exclude as a potential remedy to
`exclude certain evidence or argument that would exceed the proper scope of
`a reply”). Having considered the record currently before us, Patent Owner
`has not shown that it would be unfairly prejudiced if we wait until the close
`of evidence to determine whether the alleged new arguments and/or
`evidence were belatedly and improperly presented.
`Instead, on these facts, we determine that the following procedure
`serves the just, speedy, and inexpensive resolution of this issue. First, Patent
`Owner may file, in each proceeding, an additional two-page section in each
`
`
`3 Available at uspto.gov/TrialPracticeGuideConsolidated.
`
`3
`
`
`
`IPR2020-00912 Patent 10,213,108 B2
`IPR2020-00954 Patent 9,788,735 B2
`IPR2020-01015 Patent 9,795,300 B2
`IPR2020-01054 Patent 9,872,623 B2
`
`sur-reply titled “Patent Owner’s List of Improper Reply Arguments or
`Evidence,” which shall include a numbered list of citations to those passages
`of the reply (or to specific evidence) that Patent Owner believes exceed the
`scope of a proper reply.4 These two pages are excluded from the total word
`count allotted for the sur-reply. This list must include page and line
`numbers for each citation, and may include a brief (e.g., one sentence)
`explanation. Second, Patent Owner if it wishes may include separate
`additional argument in its sur-reply as to why certain argument or evidence
`in the reply briefing is improper, but these additional arguments will be
`included in the overall word count.
`At this time, we do not find it necessary for the Petitioner to file any
`response. To the extent the panel determines that any item identified by
`Patent Owner warrants additional briefing, an additional Order will be
`issued, providing such instruction to the parties. For one example, should
`we determine an additional briefing is necessary, we may invite Petitioner to
`file a short response to each item in Patent Owner’s list, or to specific items
`in Patent Owner’s list. Otherwise, the propriety or impropriety of the
`identified portions of the reply will be addressed, to the extent necessary, in
`our Final Written Decision.
`
`
`4 For purposes of this Order, an improper argument or evidence is an
`argument or evidence made or produced by Petitioner in its Reply where
`(1) it is beyond the scope of a reply under 37 C.F.R. § 42.23(b) or (2) if we
`were to rely on it in finding the challenged claims unpatentable, Patent
`Owner would not have had sufficient notice and opportunity to respond (see,
`e.g., Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015)).
`4
`
`
`
`IPR2020-00912 Patent 10,213,108 B2
`IPR2020-00954 Patent 9,788,735 B2
`IPR2020-01015 Patent 9,795,300 B2
`IPR2020-01054 Patent 9,872,623 B2
`
`
`Furthermore, although at this time we do not deem it necessary to
`resolve this issue via formal briefing, should either party request a hearing,
`the parties may address this issue during oral argument if this issue is not
`resolved prior to oral argument.
`In view of the foregoing, it is hereby:
`ORDERED that Patent Owner is authorized to file, in each captioned
`proceeding, an additional two-page “Patent Owner’s List of Improper Reply
`Arguments or Evidence,” as part of Patent Owner’s sur-reply, and that this
`two-page list will not be counted toward the sur-reply word count.
`
`
`
`5
`
`
`
`IPR2020-00912 Patent 10,213,108 B2
`IPR2020-00954 Patent 9,788,735 B2
`IPR2020-01015 Patent 9,795,300 B2
`IPR2020-01054 Patent 9,872,623 B2
`
`PETITIONER:
`Rudolph A. Telscher, Jr.
`Daisy Manning
`Nathan P. Sportel
`Jennifer E. Hoekel
`HUSCH BLACKWELL LLP
`PTAB-RTelscher@huschblackwell.com
`PTAB-DManning@huschblackwell.com
`Nathan.Sportel@huschblackwell.com
`PTAB-JHoekel@huschblackwell.com
`
`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
`
`
`
`6
`
`
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