`571-272-7822
`
`Paper 11
`Entered: May 26, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`IPR2020-01521 (Patent 10,292,628 B1)
`IPR2020-01714 (Patent 10,631,765 B1)
`IPR2020-01715 (Patent 10,631,765 B1)
`
`
`
`
`
`
`
`
`
`
`Before JOSIAH C. COCKS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`ORDER
`Granting Petitioner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123
`
`
`
`
`
`
`
`
`
`IPR2020-01521 (Patent 10,292,628 B1)
`IPR2020-01714 (Patent 10,631,765 B1)
`IPR2020-01715 (Patent 10,631,765 B1)
`
`
`In each captioned proceeding, we entered a Decision to Institute the
`
`requested inter partes review. See, e.g., IPR2020-01714, Paper 8.1 On
`
`May 13, 2021, Petitioner requested authorization to file a motion to submit
`
`supplemental information in each proceeding, and we granted authorization
`
`by email.
`
`On May 20, 2021, Petitioner filed a Motion to Submit Supplemental
`
`Information in each proceeding. See, e.g., IPR2020-01714, Paper 11
`
`(“Mot.”). In IPR2020-01714 and IPR2020-01715, Petitioner moves to
`
`submit a Declaration of Jacob Munford (“Munford Declaration”) and a
`
`Declaration of Gordon MacPherson: Mendelson-2006 (“MacPherson
`
`M-2006 Declaration”) into the record as supplemental information, to be
`
`entered as Exhibits 1045 and 1046. See, e.g., id. at 1. In IPR2020-01521,
`
`Petitioner moves to submit the Munford Declaration, the MacPherson
`
`M-2006 Declaration, and an additional Declaration of Gordon MacPherson:
`
`Mendelson-2003 (“MacPherson M-2003 Declaration”) into the record as
`
`supplemental information, to be entered as Exhibits 1038, 1039, and 1040.
`
`IPR2020-01521, Paper 10, 1.
`
`Petitioner contends that the declarations “provide further testimony
`
`supporting the public accessibility and authenticity of prior art references
`
`relied upon in the challenges set forth in [each] Petition,” and are offered in
`
`response to Patent Owner’s objections, which were served on Petitioner in
`
`late April, 2021. See, e.g., Mot. 1–2. Petitioner also contends that its
`
`motions meet the requirements for submission of supplemental information
`
`
`1 In this Order, we provide citations to the record of IPR2020-01714, unless
`otherwise indicated. Similar papers appear in the record of each captioned
`proceeding.
`
`2
`
`
`
`IPR2020-01521 (Patent 10,292,628 B1)
`IPR2020-01714 (Patent 10,631,765 B1)
`IPR2020-01715 (Patent 10,631,765 B1)
`
`as set forth in 37 C.F.R. § 42.123(a) because the motions are timely and the
`
`declarations are relevant to a claim for which trial has been instituted. See,
`
`e.g., id. at 3–4. Patent Owner indicated by email that it will not oppose the
`
`motions.
`
`As the motions are unopposed and otherwise satisfy the requirements
`
`of § 42.123(a), we grant Petitioner’s motions.2
`
`Accordingly, it is:
`
`ORDER
`
`ORDERED that Petitioner’s Motion to Submit Supplemental
`
`Information is granted in each proceeding.
`
`
`
`
`
`
`
`
`
`
`2 The declarations respond to Patent Owner’s evidentiary objections and
`were served on Patent Owner in accordance with 37 C.F.R. § 42.64. See,
`e.g., Mot. 2. As such, the declarations are supplemental evidence governed
`by 37 C.F.R. § 42.64(b)(2). See id. (“Petitioner served Patent Owner with
`supplemental evidence including [the declarations].”). Because the parties
`agree to entry of the declarations as supplemental information, governed by
`37 C.F.R. § 42.123(a), we grant Petitioner’s motions, regardless of the fact
`that the declarations could instead be entered with Petitioner’s opposition to
`a motion to exclude, in the event such a motion is filed by Patent Owner.
`See 37 C.F.R. § 42.5.
`
`3
`
`
`
`IPR2020-01521 (Patent 10,292,628 B1)
`IPR2020-01714 (Patent 10,631,765 B1)
`IPR2020-01715 (Patent 10,631,765 B1)
`
`PETITIONER:
`
`Walter Renner
`Roberto Devoto
`Hyun Jin In
`FISH & RICHARDSON P.C.
`Axf-ptab@fr.com
`devoto@fr.com
`in@fr.com
`
`
`PATENT OWNER:
`
`Joseph Re
`Stephen Larson
`Jarom Kesler
`Jack Peterson
`KNOBBE, MARTENS, OLSON, & BEAR, LLP
`2jrr@knobbe.com
`2swl@knobbe.com
`2jzk@knobbe.com
`2jup@knobbe.com
`
`
`
`
`4
`
`
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