Trials@uspto.gov
`571-272-7822
`
`Paper 33
`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.
`
`
`571-272-7822
`
`Paper 33
`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
`
`
`
`
`
`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
`
`
`
`5
`
`
`
`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
`
`
`
`6
`
`
`
`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
`
`
`
`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
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
