`Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 9
`Date: October 7, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`SOTERA WIRELESS, INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`____________
`
`IPR2020-01082
`Patent 10,255,994 B2
`
`____________
`
`
`
`Before GEORGE R. HOSKINS, JENNIFER MEYER CHAGNON, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2020-01082
`Patent 10,255,994 B2
`
`
`Sotera Wireless, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`pursuant to 35 U.S.C. §§ 311–319 to institute an inter partes review of
`claims 1–8 of U.S. Patent No. 10,255,994 B2.
`Masimo Corporation (“Patent Owner”) filed a Preliminary Response
`(Paper 8, “Prelim. Resp.”). Patent Owner, in part, urges us to exercise our
`discretion to deny institution, because a trial here would be an inefficient use
`of Board resources, in view of the related, parallel district court action,
`Masimo Corp. v. Sotera Wireless, Inc. and Hon Hai Precision Industry Co.
`Ltd., Civil Action No. 3:19-cv-01100-BAS-NLS (S.D. Cal.) (“the District
`Court Litigation”). Prelim. Resp. 20–26.
`Upon review of the foregoing, we conclude that further briefing is
`warranted concerning the factual and legal issues presented as to Patent
`Owner’s foregoing argument, in particular to address the factors laid out in
`Apple, Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020)
`(precedential) (“Fintiv”). We, therefore, authorize the parties to file further
`evidence and argument, as follows.
`It is hereby:
`ORDERED that Petitioner may file, on or before Friday, October 16,
`2020, a Reply to the Preliminary Response, of no more than seven (7) pages
`in length, addressing the Fintiv factors, and including, if desired, new
`evidence concerning the status of the District Court Litigation and the
`relevance thereof to the present proceeding; and
`FURTHER ORDERED that Patent Owner may file, on or before
`Friday, October 23, 2020, a Sur-reply to any Reply filed by Petitioner, of no
`more than seven (7) pages in length, and including, if desired, new evidence
`
`2
`
`
`
`IPR2020-01082
`Patent 10,255,994 B2
`
`concerning the status of the District Court Litigation and the relevance
`thereof to the present proceeding.
`
`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
`
`
`PATENT OWNER:
`
`Benjamin A. Katzenellenbogen
`Irfan A. Lateef
`Brian C. Claassen
`KNOBBE, MARTENS, OLSON, & BEAR, LLP
`2bak@knobbe.com
`2ial@knobbe.com
`2bcc@knobbe.com
`
`3
`
`
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
