`571-272-7822
`
`Paper 34
`Entered: July 28, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SOTERA WIRELESS, INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`____________
`
`IPR2020-00967 (Patent RE47,244 E)
`IPR2020-01019 (Patent RE47,353 E)
`IPR2020-01033 (Patent RE47,249 E)1
`____________
`
`
`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`CHAGNON, 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 three cases. The parties are
`not authorized to use this style heading for subsequent papers without prior Board
`approval.
`
`
`
`IPR2020-00967 (Patent RE47,244 E)
`IPR2020-01019 (Patent RE47,353 E)
`IPR2020-01033 (Patent RE47,249 E)
`
`I.
`
`ORAL ARGUMENT
`Time and Format
`A.
`Petitioner Sotera Wireless, Inc. and Patent Owner Masimo Corporation each
`requested oral argument in these inter partes review proceedings pursuant to
`37 C.F.R. § 42.70. See Papers 34, 35.2 Upon consideration, the parties’ requests
`are granted as specified and set forth in this Order.
`Both parties requested a single consolidated hearing for all three
`proceedings. Paper 34, 1; Paper 35, 2. As such, we will hold a single consolidated
`hearing. Each party will have sixty (60) minutes of total oral argument time. The
`transcript will be entered into each proceeding; however, any argument or evidence
`presented by a party at the consolidated hearing will be applicable only in the
`proceeding in which the record provides a proper foundation for such argument or
`evidence.
`Oral argument will commence at 1:00 PM Eastern Time on
`September 8, 2021, by videoconference. The parties are directed to contact the
`Board at least 5 business 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.
`
`
`2 All citations are to IPR2020-00967. Similar requests were filed in
`IPR2020-01019 (Papers 32, 33), and IPR2020-01033 (Papers 31, 32).
`2
`
`
`
`
`
`IPR2020-00967 (Patent RE47,244 E)
`IPR2020-01019 (Patent RE47,353 E)
`IPR2020-01033 (Patent RE47,249 E)
`
`
`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
`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 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.
`
`
`3 For example, if a party is experiencing poor video quality, the Board may provide
`alternate dial-in information.
`
`
`
`3
`
`
`
`IPR2020-00967 (Patent RE47,244 E)
`IPR2020-01019 (Patent RE47,353 E)
`IPR2020-01033 (Patent RE47,249 E)
`
`
`Petitioner bears the ultimate burden of proof that the claims at issue in this
`review are unpatentable. 35 U.S.C. § 316(e). Therefore, at oral hearing, Petitioner
`will proceed first to present its arguments with regard to the challenged claims and
`grounds on which we instituted trial in the above-captioned proceedings.
`Petitioner may reserve some, but not more than half, 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, if any. 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. See Patent Trial and Appeal Board
`Consolidated Trial Practice Guide (“CTPG”), November 2019 Update, p. 83.4 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.” Id. at 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
`
`
`4 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`4
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`
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`IPR2020-00967 (Patent RE47,244 E)
`IPR2020-01019 (Patent RE47,353 E)
`IPR2020-01033 (Patent RE47,249 E)
`
`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.
`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
`
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`5
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`IPR2020-00967 (Patent RE47,244 E)
`IPR2020-01019 (Patent RE47,353 E)
`IPR2020-01033 (Patent RE47,249 E)
`
`easily ascertain whether a given demonstrative contains “new” 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 a qualifying
`LEAP practitioner participate in the program and conduct at least a portion of the
`
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`6
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`
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`IPR2020-00967 (Patent RE47,244 E)
`IPR2020-01019 (Patent RE47,353 E)
`IPR2020-01033 (Patent RE47,249 E)
`
`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 September 8, 2021, by video, and proceed in the
`manner set forth herein.
`
`
`
`
`
`
`
`7
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`
`
`IPR2020-00967 (Patent RE47,244 E)
`IPR2020-01019 (Patent RE47,353 E)
`IPR2020-01033 (Patent RE47,249 E)
`
`FOR 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
`
`
`FOR PATENT OWNER:
`
`Stephen W. Larson
`Jacob L. Peterson
`Irfan A. Lateef
`Brian C. Claassen
`Jarom D. Kesler
`Jeremiah S. Helm, Ph.D.
`KNOBBE, MARTENS, OLSON, & BEAR, LLP
`2swl@knobbe.com
`2jup@knobbe.com
`2ial@knobbe.com
`2bcc@knobbe.com
`2jzk@knobbe.com
`2jgh@knobbe.com
`
`
`
`
`8
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