`
`By:
`
`Filed on behalf of:
`Patent Owner Masimo Corporation
`Joseph R. Re (Reg. No. 31,291)
`Stephen W. Larson (Reg. No. 69,133)
`Jarom D. Kesler (Reg. No. 57,046)
`Jacob L. Peterson (Reg. No. 65,096)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`E-mail: AppleIPR2020-1521-628@knobbe.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2020-01521
`U.S. Patent 10,292,628
`
`
`
`
`
`
`PATENT OWNER REQUEST FOR ORAL ARGUMENT
`
`
`
`
`
`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`Pursuant to 37 C.F.R. § 42.70(a) and the Scheduling Order (Paper 8), Patent
`
`Owner Masimo Corporation (“Patent Owner”) respectfully requests that the Board
`
`hear oral argument on the instituted grounds in IPR2020-01521 involving U.S.
`
`Patent 10,292,628 (the ’628 patent).
`
`The Board scheduled oral argument for January 19, 2022. In addition to the
`
`oral argument for the above-referenced IPR proceeding, the Board scheduled oral
`
`arguments for January 19, 2022 in (i) IPR2020-01714 involving U.S. Patent No.
`
`10,631,765 and (ii) IPR2020-01715 involving U.S. Patent No. 10,631,765. U.S.
`
`Patent No. 10,631,765 is related to the ’628 patent.
`
`Given the extensive overlap in these three IPR proceedings, including
`
`Petitioner’s asserted art and the parties’ arguments, Patent Owner requests that the
`
`Board hold a consolidated oral argument. Patent Owner respectfully requests that
`
`each party be allotted forty five (45) minutes for this consolidated oral argument in
`
`view of the extensive overlap with the consolidated oral argument scheduled for
`
`December 7, 2021 involving related patents in (i) IPR2020-01520 involving U.S.
`
`Patent No. 10,258,265, (ii) IPR2020-01536 involving U.S. Patent No. 10,588,553,
`
`(iii) IPR2020-01537 involving U.S. Patent No. 10,588,553, (iv) IPR2020-01538
`
`involving U.S. Patent No. 10,588,554, and (v) IPR2020-01539 involving U.S.
`
`Patent No. 10,588,554. Patent Owner anticipates that five (5) individuals will
`
`attend the oral argument on its behalf.
`
`-1-
`
`
`
`IPR2020-01521
`Apple Inc. v. Masimo Corporation
`
`
`
`
`Dated: December 3, 2021
`
`Respectfully submitted,
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`/Jacob L. Peterson/
`Jacob L. Peterson (Reg. No. 65,096)
`Customer No. 64,735
`
`Attorney for Patent Owner
`Masimo Corporation
`
`
`
`
`
`-2-
`
`
`
`IPR2020-01521
`Apple Inc. 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
`
`REQUEST FOR ORAL ARGUMENT is being served electronically on
`
`December 3, 2021, to the e-mail addresses shown below:
`
`W. Karl Renner, Reg. No. 41,265
`Roberto J. Devoto, Reg. No. 55,108
`Hyun Jin In, Reg. No. 70,014
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Fax: 877-769-7945
`Email: IPR50095-0008IP1@fr.com
`Email: PTABInbound@fr.com, axf-ptab@fr.com; devoto@fr.com;
`in@fr.com
`
`/Jacob L. Peterson/
`Jacob L. Peterson (Reg. No. 65,096)
`Attorney for Patent Owner
`Masimo Corporation
`
`54677091
`
`Dated: December 3, 2021
`
`
`
`-3-
`
`
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