Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 25
`Date: December 17, 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)
`IPR2020-01523 (Patent 8,457,703)
`IPR2020-01524 (Patent 10,433,776)
`IPR2020-01526 (Patent 6,771,994)
`IPR2020-01714 (Patent 10,631,765)
`IPR2020-01715 (Patent 10,631,765)
`
`
`Before JOSIAH C. COCKS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`KINDER, Administrative Patent Judge.
`
`
`
`ORDER
`Setting Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 25
`Date: December 17, 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)
`IPR2020-01523 (Patent 8,457,703)
`IPR2020-01524 (Patent 10,433,776)
`IPR2020-01526 (Patent 6,771,994)
`IPR2020-01714 (Patent 10,631,765)
`IPR2020-01715 (Patent 10,631,765)
`
`
`Before JOSIAH C. COCKS, ROBERT L. KINDER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`KINDER, Administrative Patent Judge.
`
`
`
`ORDER
`Setting Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2020-01521 (Patent 10,292,628); IPR2020-01523 (Patent 8,457,703)
`IPR2020-01524 (Patent 10,433,776); IPR2020-01526 (Patent 6,771,994)
`IPR2020-01714 (Patent 10,631,765); IPR2020-01715 (Patent 10,631,765)
`
`
`ORAL ARGUMENT
`
`Time and Format
`The Board has considered Petitioner’s and Patent Owner’s requests
`for oral argument.1 Taking into consideration these requests, and the time
`constraints for oral hearings on this day, the oral arguments will commence
`at 10:00 am Eastern Time on January 19, 2022, by videoconference.2
`USPTO facilities remain closed to the public due to the state of affairs
`relating to COVID-19. The Board will provide a court reporter for the
`hearings, and the reporter’s transcripts will constitute the official record of
`the hearing for each proceeding.
`Petitioner has generally requested no more than one hour per side for
`oral argument time for each proceeding. Patent Owner’s requests suggest
`that three groupings of the six cases would be appropriate – combining
`IPR1521, IPR1714, and IPR1715 in one group, and IPR1523 and IPR1524
`into a second group. Both parties agreed that IPR1526 should be heard
`separately. Petitioner was strongly opposed to arguining IPR1523 and
`IPR1524 together. Petitioner was hestitant to argue IPR1521, IPR1714, and
`
`
`1 IPR2020-01521 (“IPR1521”) (Papers 24 and 23); IPR2020-01523
`(“IPR1523”) (Papers 21 and 22); IPR2020-01524 (“IPR1524”) (Papers 21
`and 22); IPR2020-01526 (“IPR1526”) (Papers 18 and 20); IPR2020-01714
`(“IPR1714”) (Papers 23 and 24); IPR2020-01715 (“IPR1715”) (Papers 23
`and 24). On December 16, 2021, counsel for each party, and Judges Cocks,
`Wieker, and Kinder, also conducted a conference call to further discuss
`grouping of arguments and timing.
`2 If there are any concerns about disclosing confidential information, the
`parties must contact the Board at Trials@uspto.gov at least ten (10) business
`days before the hearing date.
`
`2
`
`
`
`IPR2020-01521 (Patent 10,292,628); IPR2020-01523 (Patent 8,457,703)
`IPR2020-01524 (Patent 10,433,776); IPR2020-01526 (Patent 6,771,994)
`IPR2020-01714 (Patent 10,631,765); IPR2020-01715 (Patent 10,631,765)
`
`IPR1715 together, but did concede that there was overlap in these three
`proceedings.
`Upon considering these requests, we grant oral argument according to
`the following schedule and groupings of proceedings to be argued together.
`
`
`Proceeding(s)
`IPR2020-01521
`IPR2020-01714
`IPR2020-01715
`
`Time Per Side
`60 minutes
`
`Start Time
`10:00 AM ET
`
`IPR2020-01523
`
`40 minutes
`
`IPR2020-01524
`
`40 minutes
`
`IPR2020-01526
`
`40 minutes
`
`30 minutes after conclusion of
`prior argument
`
`5 minutes after conclusion of
`prior argument
`
`15 minutes after conclusion of
`prior argument
`
`
`The first three proceedings (IPR2020-01521, IPR2020-01714, and IPR2020-
`01715) will be argued together and share a single transcript. Given the
`overlap in these first three proceedings, statements made during this first
`hearing are applicable to each of the three proceedings, unless it is explicitly
`noted that a statement applies to a specific proceeding only.
`The remaining proceedings will be argued separately and each will
`have its own transcript. As a reminder, even if an argument was made
`during the hearing for a prior proceeding, the argument must also be made
`and put on record to be considered during the hearing for a later proceeding.
`
`3
`
`
`
`IPR2020-01521 (Patent 10,292,628); IPR2020-01523 (Patent 8,457,703)
`IPR2020-01524 (Patent 10,433,776); IPR2020-01526 (Patent 6,771,994)
`IPR2020-01714 (Patent 10,631,765); IPR2020-01715 (Patent 10,631,765)
`
`
`For each respective hearing, Petitioner will open the hearing by
`presenting its case for unpatentability of the challenged patent(s).
`Thereafter, Patent Owner will respond to Petitioner’s argument. Petitioner
`may reserve rebuttal time to respond to arguments presented by Patent
`Owner. In accordance with the Consolidated Trial Practice Guide3
`(“CTPG”), issued in November 2019, Patent Owner may request to reserve
`time for a brief sur-rebuttal. See CTPG 83.
`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 oral 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 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. If no
`response is received within two (2) days from the Board, the party
`requesting the conference should call the Board directly to ensure the request
`is being processed.
`
`
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`4
`
`
`
`IPR2020-01521 (Patent 10,292,628); IPR2020-01523 (Patent 8,457,703)
`IPR2020-01524 (Patent 10,433,776); IPR2020-01526 (Patent 6,771,994)
`IPR2020-01714 (Patent 10,631,765); IPR2020-01715 (Patent 10,631,765)
`
`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 on or before Friday, January 14, 2022.4
`Demonstratives are not a mechanism for making new arguments.
`Demonstratives are also 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 85–86; 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 includes a citation to a paper in the record, which allows
`the Board to easily ascertain whether a given demonstrative contains “new”
`
`
`4 The parties may stipulate to an alternative schedule for serving and filing
`demonstratives, and request the Board to modify the schedule for filing
`demonstratives, at least seven (7) business days before the hearing date.
`
`5
`
`
`
`IPR2020-01521 (Patent 10,292,628); IPR2020-01523 (Patent 8,457,703)
`IPR2020-01524 (Patent 10,433,776); IPR2020-01526 (Patent 6,771,994)
`IPR2020-01714 (Patent 10,631,765); IPR2020-01715 (Patent 10,631,765)
`
`argument or evidence or, instead, contains only that which is developed in
`the existing record.
`Due to the nature of the Board’s consideration of demonstratives and
`the opportunity afforded for the parties to reach an agreement without
`involving the Board, the Board does not anticipate that objections to
`demonstratives are likely to be sustained. Nevertheless, to the extent that a
`party objects to the propriety of any demonstrative, the parties shall meet
`and confer in good faith to resolve any objections to demonstratives prior to
`filing the objections with the Board. If such objections cannot be resolved,
`the parties may file any objections to demonstratives with the Board no later
`than the time of the hearing. The objections shall identify with particularity
`which portions of the demonstratives are subject to objection and include a
`one (1) sentence statement of the reason for each objection. No argument or
`further explanation is permitted. The Board will consider any objections,
`and may reserve ruling on the objections.5 Any objection to demonstratives
`that is not timely presented will be considered waived.
`Finally, the parties are reminded that each presenter should identify
`clearly and specifically each paper (e.g., by slide or screen number for a
`demonstrative) referenced during the hearing to ensure the clarity and
`accuracy of the court reporter’s transcript and for the benefit of all
`participants appearing electronically.
`
`
`5 If time permits, the Board may schedule a conference call with the parties
`to discuss any filed objections.
`
`6
`
`
`
`IPR2020-01521 (Patent 10,292,628); IPR2020-01523 (Patent 8,457,703)
`IPR2020-01524 (Patent 10,433,776); IPR2020-01526 (Patent 6,771,994)
`IPR2020-01714 (Patent 10,631,765); IPR2020-01715 (Patent 10,631,765)
`
`Presenting Counsel
`The Board generally expects lead counsel for each party to be present
`at the hearing. See CTPG 11. Any counsel of record may present the
`party’s argument as long as that counsel is present by video.
`
`Video Hearing Details
`To facilitate planning, each party must contact the Board at
`PTABHearings@uspto.gov at least five (5) business days prior to the
`hearing date to receive video set-up information.
`As a reminder, all arrangements and the expenses involved with
`appearing by video, such as the selection of the facility from which a party
`will attend by video, must be borne by that party. If a video connection
`cannot be established, the parties will be provided with dial-in connection
`information, and the hearing will be conducted telephonically.
`If one or both parties would prefer to participate in the hearing
`telephonically, they must contact the Board at PTABHearings@uspto.gov at
`least five (5) business days prior to the hearing date to receive dial-in
`connection information.
`Counsel should unmute only when speaking. The panel will have
`access to all papers filed with the Board, including demonstratives. During
`the hearing, the parties are reminded to identify clearly and specifically each
`paper referenced (e.g., by slide or screen number for a demonstrative) to
`ensure the clarity and accuracy of the court reporter’s transcript and for the
`benefit of all participants appearing electronically. In addition, the parties
`are advised to identify themselves each time they speak. Furthermore, the
`remote nature of the hearing may also result in an audio lag, and thus the
`
`7
`
`
`
`IPR2020-01521 (Patent 10,292,628); IPR2020-01523 (Patent 8,457,703)
`IPR2020-01524 (Patent 10,433,776); IPR2020-01526 (Patent 6,771,994)
`IPR2020-01714 (Patent 10,631,765); IPR2020-01715 (Patent 10,631,765)
`
`parties are advised to observe a pause prior to speaking, so as to avoid
`speaking over others.
`If at any time during the hearing, counsel encounters technical or
`other difficulties that fundamentally undermine counsel’s ability to
`adequately represent its client, please let the panel know immediately, and
`adjustments will be made.6
`
`Remote Attendance Requests
`Members of the public may request to listen to this 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 at PTABHearings@uspto.gov at least ten (10) business days prior to
`the hearing date.
`
`Audio / Visual Equipment Requests
`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 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 at least five (5) business days before the hearing
`date.
`
`
`6 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
`
`8
`
`
`
`IPR2020-01521 (Patent 10,292,628); IPR2020-01523 (Patent 8,457,703)
`IPR2020-01524 (Patent 10,433,776); IPR2020-01526 (Patent 6,771,994)
`IPR2020-01714 (Patent 10,631,765); IPR2020-01715 (Patent 10,631,765)
`
`Legal Experience and Advancement Program (LEAP)
`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 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.
`
`ORDER
`
`Accordingly, it is:
`ORDERED that oral argument for this proceeding shall commence at
`10:00 am Eastern Time on January 19, 2022, by videoconference, and
`proceed in the manner set forth herein.
`
`9
`
`
`
`IPR2020-01521 (Patent 10,292,628); IPR2020-01523 (Patent 8,457,703)
`IPR2020-01524 (Patent 10,433,776); IPR2020-01526 (Patent 6,771,994)
`IPR2020-01714 (Patent 10,631,765); IPR2020-01715 (Patent 10,631,765)
`
`
`
`FOR PETITIONER:
`
`Walter Renner
`Roberto Devoto
`Hyun Jin In
`Dan Smith
`Kim Leung
`Andrew Patrick
`Vivian Lu
`Usman Khan
`Grace Kim
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`devoto@fr.com
`in@fr.com
`dsmith@fr.com
`leung@fr.com
`patrick@fr.com
`vlu@fr.com
`khan@fr.com
`gkim@fr.com
`
`FOR PATENT OWNER:
`
`Joseph Re
`Stephen Larson
`Jarom Kesler
`Jacob Peterson
`Ben Katzenellenbogen
`Shannon Lam
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2jrr@knobbe.com
`2swl@knobbe.com
`2jzk@knobbe.com
`2jup@knobbe.com
`
`10
`
`
`
`IPR2020-01521 (Patent 10,292,628); IPR2020-01523 (Patent 8,457,703)
`IPR2020-01524 (Patent 10,433,776); IPR2020-01526 (Patent 6,771,994)
`IPR2020-01714 (Patent 10,631,765); IPR2020-01715 (Patent 10,631,765)
`
`2bak@knobbe.com
`2sxl@knobbe.com
`
`11
`
`
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