`571-272-7822
`
`Paper 11
`Entered: June 14, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner.
`
`
`IPR2020-01713 (Patent 10,624,564 B1)
`IPR2020-01716 (Patent10,702,194 B1)
`IPR2020-01733 (Patent 10,702,195 B1)
`IPR2020-01737 (Patent 10,709,366 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
`
`
`
`
`
`
`
`
`
`IPR2020-01713 (Patent 10,624,564 B1)
`IPR2020-01716 (Patent10,702,194 B1)
`IPR2020-01733 (Patent 10,702,195 B1)
`IPR2020-01737 (Patent 10,709,366 B1)
`
`
`In each captioned proceeding, we entered a Decision to Institute the
`requested inter partes review. See, e.g., IPR2020-01716, Paper 7.1 On
`June 2, 2021, Petitioner requested authorization to file a motion to submit
`supplemental information in each proceeding, and we granted authorization
`by email.
`On June 9, 2021, Petitioner filed a Motion to Submit Supplemental
`Information in each proceeding. See, e.g., IPR2020-01716, Paper 10
`(“Mot.”). In IPR2020-01716, IPR2020-01733, and IPR2020-01737,
`Petitioner moves to submit a Declaration of Jacob Munford (“Munford
`Declaration”), a Declaration of Gordon MacPherson: Mendelson-2006
`(“MacPherson M-2006 Declaration”), a Declaration of Gordon MacPherson:
`Mendelson-2003 (“MacPherson M-2003 Declaration”), and a Declaration of
`Gordon MacPherson: Mendelson-IEEE-1988 (“MacPherson M-1988
`Declaration”) into the record as supplemental information, to be entered as
`Exhibits 1049–1052. See, e.g., id. at 1. In IPR2020-01713, Petitioner
`moves to submit the Munford Declaration into the record as supplemental
`information, to be entered as Exhibit 1049. IPR2020-01713, 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
`mid-May, 2021. See, e.g., Mot. 1–2. Petitioner also contends that its
`
`
`1 In this Order, we provide citations to the record of IPR2020-01716, unless
`otherwise indicated. Similar papers appear in the record of each captioned
`proceeding.
`
`2
`
`
`
`IPR2020-01713 (Patent 10,624,564 B1)
`IPR2020-01716 (Patent10,702,194 B1)
`IPR2020-01733 (Patent 10,702,195 B1)
`IPR2020-01737 (Patent 10,709,366 B1)
`
`motions meet the requirements for submission of supplemental information
`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 4–5. Petitioner represents that Patent Owner does not oppose the
`motions. See, e.g., id. at 1.
`As the motions are unopposed and otherwise satisfy the requirements
`of § 42.123(a), we grant Petitioner’s motions.2
`ORDER
`
`Accordingly, it is:
`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
`
`
`
`IPR2020-01713 (Patent 10,624,564 B1)
`IPR2020-01716 (Patent10,702,194 B1)
`IPR2020-01733 (Patent 10,702,195 B1)
`IPR2020-01737 (Patent 10,709,366 B1)
`
`PETITIONER:
`
`Walter Renner
`Andrew Patrick
`Usman Khan
`FISH & RICHARDSON P.C.
`Axf-ptab@fr.com
`patrick@fr.com
`khan@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
`
`