Filed: October 23, 2020
`
`
`
`Filed on behalf of:
`Patent Owner Masimo Corporation
`By: Benjamin A. Katzenellenbogen (Reg. No. 53,102)
`Irfan A. Lateef (Reg. No. 51,922)
`Brian C. Claassen (Reg. No. 63,051)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`E-mail:
`SoteraIPR994@knobbe.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`SOTERA WIRELESS,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2020-01082
`U.S. Patent 10,255,994
`
`
`
`
`
`
`PATENT OWNER SUR-REPLY REGARDING FINTIV FACTORS
`
`
`
`
`
`
`
`Filed on behalf of:
`Patent Owner Masimo Corporation
`By: Benjamin A. Katzenellenbogen (Reg. No. 53,102)
`Irfan A. Lateef (Reg. No. 51,922)
`Brian C. Claassen (Reg. No. 63,051)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`E-mail:
`SoteraIPR994@knobbe.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`SOTERA WIRELESS,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2020-01082
`U.S. Patent 10,255,994
`
`
`
`
`
`
`PATENT OWNER SUR-REPLY REGARDING FINTIV FACTORS
`
`
`
`
`
`IPR2020-01082
`Sotera Wireless v. Masimo Corporation
`EXHIBIT LIST
`
`Exhibit No.
`
`Description
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`Masimo’s Opposition to Sotera’s Motion to Stay Proceedings,
`dated June 8, 2020, filed in Masimo Corp. v. Sotera Wireless,
`Inc., Case No. 3:19-cv-01100-BAS-NLS (S.D. Cal.) (“District
`Court Action”)
`
`Case Management Order Regulating Discovery and Other Pretrial
`Proceedings, dated December 9, 2019, filed in the District Court
`Action
`
`Order Granting Joint Motion to Modify Case Management Order,
`dated April 29, 2020, filed in the District Court Action
`
`Defendants’ LPR 3.3 Invalidity Contentions, dated March 20,
`2020, served in the District Court Action (without exhibits)
`
`Reserved
`
`Reserved
`
`Defendants’ Amended Invalidity Contentions, dated September 8,
`2020, served in the District Court Action (without exhibits)
`
`Joint Hearing Statement regarding Claim Construction Hearing,
`dated August 10, 2020, filed in the District Court Action and
`Exhibit 2 and Appendix I thereto
`
`Order Granting in Part Defendants’ Ex Parte Motion to Modify
`Case Management Order, dated October 6, 2020, filed in the
`District Court Action
`
`Exhibit List, Page 1
`
`
`
`IPR2020-01082
`Sotera Wireless v. Masimo Corporation
`Pursuant to the Board’s October 7, 2020 Order – Conduct of Proceeding
`
`(Paper 9), Masimo Corporation (“Masimo”) hereby submits its Sur-Reply to
`
`Petitioner’s Reply regarding the factors laid out in Apple, Inc. v. Fintiv, Inc.,
`
`IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”).
`
`I. INTRODUCTION
`
`None of Petitioner’s arguments change the discretionary Fintiv analysis. For
`
`example, Petitioner does not dispute that it waited until just before the one-year
`
`deadline to unleash nine petitions on Masimo. Petitioner admits it had time to draft
`
`these petitions far earlier—for the first six months “virtually no activity occurred in
`
`the District Court litigation.” Paper 12 at 1. Petitioner’s dilatory actions eliminated
`
`many of the efficiencies that might normally result from an IPR. Indeed, Masimo
`
`already expended substantial time and resources in discovery, which is active and
`
`ongoing, and in claim construction briefing.
`
`Petitioner relies heavily on the fact that the Court extended the trial date by
`
`two months. But, the final written decision date for all of these IPRs will still come
`
`on or after the trial. That change should not alter the Fintiv analysis.
`
`Petitioner also takes advantage of its failure to address the Fintiv factors in its
`
`petition, and the Board’s resulting invitation to address those factors in a Reply, to
`
`respond to the merits of Masimo’s Patent Owner Preliminary Response. Paper 6.
`
`But none of Petitioner’s arguments show the Petition is strong on the merits. To the
`
`-1-
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`IPR2020-01082
`Sotera Wireless v. Masimo Corporation
`contrary, Petitioner’s attempts to rewrite the Petition and supplement the record with
`
`new citations and arguments demonstrate the Petition’s weakness.
`
`II. ARGUMENT
`
`None of Petitioner’s arguments changes the balancing of the Fintiv factors.
`
`Fintiv Factor #1: Petitioner does not dispute that it filed its Motion to Stay
`
`over five months ago, on May 20, 2020. Paper 10 at 2. Yet, as Petitioner also admits,
`
`the Court has not granted that Motion. Id. Petitioner points to the Court’s
`
`observation that a rescheduled Markman date may not be necessary, depending on
`
`how the Court rules on the motion to stay. Id. But, that is always true and hardly
`
`controversial. Neither party knows how the Court will rule on the Motion to Stay.
`
`Petitioner does not even address, much less rebut, Masimo’s argument that a stay is
`
`unlikely because the parties directly compete in the market. Id. at 3. Petitioner
`
`likewise turns a blind eye to Masimo’s case law holding that such competition
`
`evidences significant prejudice that weighs against a stay. Paper 8 at 14. This factor
`
`weighs against institution.
`
`Fintiv Factor #2: Petitioner points out that the Court extended the trial date
`
`by two months and argues without support that there may be additional delays.
`
`Paper 12 at 3. But the Court specifically noted that its schedule “will not be dictated”
`
`by any IPRs. Ex. 2009 at 2 (emphasis added). It further warned that any further
`
`extension “would require good cause as to why the discovery could not have been
`
`-2-
`
`
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`IPR2020-01082
`Sotera Wireless v. Masimo Corporation
`completed under the schedule.” Id. The district court trial is scheduled for
`
`November 30, 2021, which means there is little opportunity for efficiency or
`
`simplification with IPR proceedings because the final written decision date for all of
`
`the IPRs will still come during or after trial. An IPR decision during or after trial
`
`would undermine any potential litigation efficiency as trial would have begun and
`
`the parties would have completed their invalidity arguments. Thus, this factor also
`
`weighs against institution.
`
`Fintiv Factor #3: Petitioner does not dispute that it waited until just before
`
`the statutory deadline to file its Petition. Nothing justifies Petitioner’s failure to file
`
`its petitions far earlier. Indeed, Petitioner admits that for the first six months
`
`“virtually no activity occurred in the District Court litigation.” Paper 12 at 1.
`
`Petitioner claims it delayed because of settlement negotiations. Id. Normal
`
`settlement discussions at the beginning of a case cannot excuse Petitioner’s complete
`
`failure to file its petitions until just before the statutory deadline. Indeed, Sotera’s
`
`representation that it expected a settlement is belied by its representation to the
`
`District Court that as of November 22, 2019 “[t]he parties do not currently have an
`
`expectation of a prompt settlement or resolution.” Ex. 2001 at 6. Petitioner also
`
`claims that discovery has not been directed to invalidity issues. That simply is not
`
`true as Masimo invested considerable time and resources into the parallel
`
`proceeding, such as analyzing Petitioner’s “over 5,000 pages of claim charts,” (Paper
`
`-3-
`
`
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`IPR2020-01082
`Sotera Wireless v. Masimo Corporation
`12 at 5), served two months before the petitions and more than a half-year ago.
`
`Masimo also expended substantial time and resources in discovery, which is active
`
`and ongoing, and in claim construction briefing. This factor weighs against
`
`institution.
`
`Fintiv Factor #4: Petitioner points to its stipulation to argue there will be no
`
`overlap of invalidity issues. Paper 12 at 6. But the scope of Petitioner’s error-filled
`
`stipulation is unclear. See Ex. 1038 at 7 (“This stipulation is not intended, and
`
`should be construed, to limit . . . .”; “inter parties review”) (emphases added). If
`
`Petitioner reserves the right to proceed based on the other references and
`
`combinations cited in its many-thousand pages of invalidity contentions—which the
`
`stipulation expressly appears to do—the stipulation will not avoid the inefficiency
`
`of the continued litigation of invalidity. Petitioner’s invalidity contentions use the
`
`same art from its Petition along with other references not cited in the Petition. See,
`
`e.g., Ex. 2007 at 17. Thus, the vagueness of Petitioner’s stipulation means the Court
`
`and the Board may make factual findings about the scope and content of the same
`
`set of references, opening the door to inconsistent findings and duplicative analysis.
`
`This factor weighs against institution.
`
`Fintiv Factor #5: Petitioner does not dispute that this factor weighs against
`
`institution.
`
`-4-
`
`
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`IPR2020-01082
`Sotera Wireless v. Masimo Corporation
`Fintiv Factor #6: Because Petitioner did not address the Fintiv factors in its
`
`Petition, the Board ordered a “Reply to the Preliminary Response . . . addressing the
`
`Fintiv factors.” Paper 9 at 2. Petitioner seizes on this opportunity to try to address
`
`the deficiencies in its Petition. However, Petitioner’s Reply to the Preliminary
`
`Response fails to rebut Masimo’s arguments on the merits.
`
`First, Petitioner offers the irrelevant observation that Masimo was the first
`
`party in the District Court litigation to identify the term “reporting module” as a
`
`means-plus-function limitation. Paper 12 at 7 (citing Ex. 1034). Petitioner also
`
`accuses Masimo of misstating the record. Id. But Petitioner does not, and cannot,
`
`dispute that Petitioner agreed with Masimo that “reporting module” is a means-plus-
`
`function limitation. Nor can Petitioner dispute that it told the District Court that,
`
`under the Phillips claim construction standard, the term is a means-plus-function
`
`limitation. Ex. 2008 at 15-19. Thus, Masimo’s argument is indisputably correct.
`
`Petitioner further told the District Court that its proposed construction of
`
`“reporting module” as a means-plus-function limitation was “dispositive of at least
`
`non-infringement.” Id. at 18-19. Petitioner then based its Petition on a plain-and-
`
`ordinary-meaning construction for “reporting module” under the same Phillips
`
`standard. Masimo pointed out the inconsistency, and Petitioner now says that
`
`“whether ‘reporting module’ is governed by Section 112, ¶ 6 is immaterial to
`
`infringement and invalidity . . . .” Paper 12 at 7 (emphasis added). Petitioner
`
`-5-
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`
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`IPR2020-01082
`Sotera Wireless v. Masimo Corporation
`cannot take such inconsistent positions. Petitioner cannot tell the District Court that
`
`“reporting module” is means-plus-function limitation while simultaneously telling
`
`the Board that “reporting module” is not a means-plus-function limitation. Petitioner
`
`also cannot tell the District Court that its construction is “dispositive of non-
`
`infringement” while telling the Board that the construction is “immaterial to
`
`infringement and invalidity[.]” Id. The law is clear that “[c]laim terms must be
`
`construed the same way for the purpose of determining invalidity and infringement.”
`
`TVIIM, LLC v. McAfee, Inc., 851 F.3d 1356, 1362 (Fed. Cir. 2017). Petitioner’s
`
`inconsistent statements to the Board and the District Court confirm Masimo’s
`
`arguments in its POPR and further justify a denial of the Petition.
`
`Second, Petitioner asserts that it identified a “reporting module” in Kalkman.
`
`Paper 12 at 7 (citing Pet. at 39-41). That is not the issue. Masimo pointed out that
`
`Petitioner’s proposed combination of references did not involve the “PC” in
`
`Kalkman that Petitioner identified as a “reporting module.” Paper 8 at 39. Petitioner
`
`did not identify anything in its proposed combination of references that corresponds
`
`to the claimed “reporting module.” Petitioner does not attempt to rebut this
`
`argument.
`
`Finally, Petitioner asserts that it “establishe[d] why a PHOSITA would have
`
`been motivated to combine the identified references” and cites a number of pages
`
`from its Petition without explanation. Paper 12 at 7. Petitioner does not and cannot
`
`-6-
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`IPR2020-01082
`Sotera Wireless v. Masimo Corporation
`rebut Masimo’s identification of numerous deficiencies in Petitioner’s alleged
`
`motivations to combine, including that the cited references cannot be combined and
`
`do not teach the claimed “predetermined alarm notification delay time.”
`
`Accordingly, the Fintiv factors weigh strongly against institution.
`
`
`
`
`
`Dated: October 23, 2020
`
`
`
`
`
`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`
`
`/Benjamin Katzenellenbogen/
`Benjamin A. Katzenellenbogen
`(Reg. No. 53,102)
`Customer No. 64,735
`
`Attorneys for Patent Owner
`Masimo Corporation
`
`
`-7-
`
`
`
`IPR2020-01082
`Sotera Wireless v. Masimo Corporation
`CERTIFICATE OF COMPLIANCE
`Pursuant to the Board’s October 7, 2020 Order – Conduct of Proceeding,
`
`Counsel for Patent Owner Masimo Corporation hereby certifies that this document
`
`is a total of no more than 7 pages.
`
`
`
`
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`/Benjamin Katzenellenbogen/
`Benjamin A. Katzenellenbogen
`(Reg. No. 53,102)
`
`Attorneys for Patent Owner
`Masimo Corporation
`
`
`
`Dated: October 23, 2020
`
`
`
`
`
`
`
`-8-
`
`
`
`IPR2020-01082
`Sotera Wireless v. Masimo Corporation
`CERTIFICATE OF SERVICE
`
`I hereby certify that, pursuant to 37 C.F.R. § 42.6(e) and with the agreement
`
`of counsel for Petitioner, a true and correct copy of PATENT OWNER SUR-
`
`REPLY REGARDING FINTIV FACTORS are being served electronically on
`
`October 23, 2020, to the e-mail addresses shown below:
`
`Rudolph A. Telscher, Jr.
`Nathan P. Sportel
`Daisy Manning
`Husch Blackwell LLP
`190 Carondelet Plaza, Suite 600
`St. Louis, MO 63105
`(314) 480-1500 Tel
`(314) 480-1505 Fax
`PTAB-RTelscher@huschblackwell.com
`Nathan.sportel@huschblackwell.com
`PTAB-DManning@huschblackwell.com
`
`
`
`/Benjamin Katzenellenbogen/
`Benjamin A. Katzenellenbogen
`(Reg. No. 53,102)
`
`
`Attorneys for Patent Owner
`Masimo Corporation
`
`33690044
`
`Dated: October 23, 2020
`
`
`
`-9-
`
`
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