Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 35
` Entered: July 20, 2021
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`SOTERA WIRELESS, INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`____________
`
`Cases1
`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)
`____________
`
`
`
`
`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`KINDER, Administrative Patent Judge.
`
`
`
`
`ORDER GRANTING REQUESTS FOR ORAL ARGUMENT
`37 C.F.R. § 42.70
`
`
`1 This Order addresses issues that are the same in all four cases. The parties
`are not authorized to use this style heading for any subsequent papers.
`
`
`Tel: 571-272-7822
`
`Paper 35
` Entered: July 20, 2021
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`SOTERA WIRELESS, INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`____________
`
`Cases1
`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)
`____________
`
`
`
`
`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`KINDER, Administrative Patent Judge.
`
`
`
`
`ORDER GRANTING REQUESTS FOR ORAL ARGUMENT
`37 C.F.R. § 42.70
`
`
`1 This Order addresses issues that are the same in all four cases. The parties
`are not authorized to use this style heading for 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)
`
`
`ORAL ARGUMENT
`
`I.
`Time and Format
`Petitioner and Patent Owner have each requested that an oral hearing
`for each proceeding. See Papers 33, 34.2 The parties have agreed to a single
`consolidated hearing for all proceedings with each party receiving one hour
`of time (two hours total). Id. The parties’ requests are granted to the extent
`that both parties are allotted 60 minutes each to present arguments for the
`consolidated hearing.
`Oral argument will commence at 1:00 PM Eastern Time on
`August 26, 2021, by videoconference. The parties are directed to contact
`the Board at least 5 days in advance of the hearing if there are any concerns
`about disclosing confidential information. The Board will provide a court
`reporter for the hearing, and the reporter’s transcript will constitute the
`official record of the hearing. The parties shall not make, or permit others to
`make, audio or visual recordings of the proceeding.
`If at any time during the proceeding, you encounter technical or other
`difficulties that fundamentally undermine your ability to adequately
`represent your client, please let the panel know immediately, and
`adjustments will be made.3
`
`A.
`
`
`2 All citations are to IPR2020-00912. Similar requests were filed in
`IPR2020-00954 (Papers 32, 33), IPR2020-01015 (Papers 33, 34), and
`IPR2020-01054 (Papers 30, 31).
`3 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
`
`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)
`
`
`To facilitate planning, each party must contact PTAB Hearings at
`PTABHearings@uspto.gov five business days prior to the oral hearing date
`to receive videoconference set-up information. As a reminder, all
`arrangements and expenses related to a party’s appearance by video, such as
`the selection of the facility to be used from which a party will attend by
`video, are the responsibility of that party. If a video connection cannot be
`established, the parties will be provided with dial-in connection information,
`and the oral hearing will be conducted telephonically.
`If one or both parties would prefer to participate in the oral hearing
`telephonically, they should notify PTAB Hearings at the above email
`address five business days prior to the hearing to receive dial-in connection
`information.
`Please unmute yourself only when speaking. The panel will have
`access to all papers filed with the Board, including demonstratives. During
`the oral hearing, the parties are advised to identify clearly and specifically
`each demonstrative referenced (e.g., by slide or screen number and where
`the demonstratives are located in the record, such as by paper number and
`page) to ensure the clarity and accuracy of the court reporter’s transcript. In
`addition, the parties are advised to identify themselves each time they speak.
`Furthermore, the remote nature of the oral hearing may also result in an
`audio lag, and so the parties are advised to observe a pause prior to speaking,
`so as to avoid speaking over others.
`Petitioner bears the ultimate burden of proof that the claims at issue in
`this review are unpatentable. Therefore, at oral hearing, Petitioner will
`proceed first to present its arguments with regard to the challenged claims
`
`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)
`
`and grounds on which we instituted trial in the above-captioned proceedings.
`Petitioner may reserve some of its allotted argument time for rebuttal to
`respond to Patent Owner’s arguments.
`After Petitioner’s initial presentation, Patent Owner will argue its
`opposition to Petitioner’s case and present the issues for which it bears the
`ultimate burden, including argument on any of Patent Owner’s pending
`motions. Thereafter, Petitioner may use any reserved time to respond to
`Patent Owner’s presentation. Patent Owner may reserve some of its allotted
`argument time for sur-rebuttal to respond to Petitioner’s arguments.4 The
`parties are reminded that arguments made during rebuttal and sur-rebuttal
`periods must be responsive to arguments the opposing party made in its
`immediately preceding presentation. The parties are also reminded that
`during the hearing, the parties “may only present arguments relied upon in
`the papers previously submitted.” CTPG, p. 86.
`The parties may request a pre-hearing conference in advance of the
`hearing. See id. at 82. “The purpose of the pre-hearing conference is to
`afford the parties the opportunity to preview (but not argue) the issues to be
`discussed at the hearing, and to seek the Board’s guidance as to particular
`issues that the panel would like addressed by the parties.” Id. If either party
`desires a pre-hearing conference, the parties should jointly contact the Board
`at Trials@uspto.gov at least seven (7) business days before the hearing date
`to request a conference call for that purpose.
`
`
`4 See Office Consolidated Trial Practice Guide (“CTPG”), November 2019
`Edition, p. 83, available at
`https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`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)
`
`B. Demonstratives
`As set forth in 37 C.F.R. § 42.70(b), demonstratives shall be served on
`opposing counsel at least seven (7) business days before the hearing date and
`filed no later than the time of the oral argument. The panel requests that the
`parties file demonstratives three (3) business days before the hearing date
`to allow the panel time to review the demonstratives and to also allow the
`sharing of the demonstratives with the court reporter prior to the hearing.
`Demonstratives are not a mechanism for making new arguments.
`Demonstratives also are not evidence, and will not be relied upon as
`evidence. Rather, demonstratives are visual aids to a party’s oral
`presentation regarding arguments and evidence previously presented and
`discussed in the papers. Accordingly, demonstratives shall be clearly
`marked with the words “DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE” in the footer. See Dell Inc. v. Acceleron, LLC, 884 F.3d 1364,
`1369 (Fed. Cir. 2018) (holding that the Board is obligated under its own
`regulations to dismiss untimely argument “raised for the first time during
`oral argument”). “[N]o new evidence may be presented at the oral
`argument.” CTPG 85; see also St. Jude Med., Cardiology Div., Inc. v. The
`Bd. of Regents of the Univ. of Mich., IPR2013-00041, Paper 65, 2–3 (PTAB
`Jan. 27, 2014) (explaining that “new” evidence includes evidence already of
`record but not previously discussed in any paper of record).
`Furthermore, because of the strict prohibition against the presentation
`of new evidence or arguments at a hearing, it is strongly recommended that
`each demonstrative include a citation to a paper in the record, which allows
`the Board to easily ascertain whether a given demonstrative contains “new”
`
`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)
`
`argument or evidence or, instead, contains only that which is developed in
`the existing record.
`Presenting Counsel
`C.
`The Board expects lead counsel for each party to be present at the oral
`hearing. Any counsel of record may present the party’s argument as long as
`lead counsel also is present.
`Audio/Visual Equipment Requests
`D.
`Any special requests for audio-visual equipment should be directed to
`PTABHearings@uspto.gov. A party may also indicate any special requests
`related to appearing at a video oral hearing, such as a request to
`accommodate visual or hearing impairments, and indicate how the PTAB
`may accommodate the special request. Any special requests must be
`presented in a separate communication not less than five (5) days before the
`hearing.
`Remote Attendance Requests
`E.
`Members of the public may request to listen in on this oral hearing. If
`resources are available, the Board generally expects to grant such requests.
`If either party objects to the Board granting such requests, for example,
`because confidential information may be discussed, the party must notify the
`Board by contacting PTABHearings@uspto.gov at least five business days
`prior to the oral hearing date.
`Legal Experience and Advancement Program
`F.
`The Board has established the “Legal Experience and Advancement
`Program,” or “LEAP,” to encourage advocates with less legal experience to
`argue before the Board to develop their skills. Either party may request that
`
`6
`
`
`
`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)
`
`a qualifying LEAP practitioner participate in the program and conduct at
`least a portion of the party’s oral argument. The Board will grant additional
`argument time to that party, depending on the length of the proceeding and
`the PTAB’s hearing schedule. A party should submit a request, no later than
`five (5) business days before the oral hearing, by email to the Board at
`PTABHearings@uspto.gov. Additional information and a combined LEAP
`Practitioner Request for Oral Hearing Participation and Verification Form is
`available on the LEAP website, www.uspto.gov/leap.
`
`
`II. ORDER
`
`Accordingly, it is
`ORDERED that oral argument for this proceeding shall commence at
`1:00 PM Eastern Time on August 26, 2021, by video, and proceed in the
`manner set forth herein.
`
`
`
`
`
`7
`
`
`
`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 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
`
`
`8
`
`
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