`571-272-7822
`
`Paper 11
`Entered: July 13, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner.
`
`
`IPR2021-00193 (Patent 10,299,708 B1)
`IPR2021-00195 (Patent 10,376,190 B1)
`IPR2021-00208 (Patent 10,258,266 B1)
`IPR2021-00209 (Patent 10,376,191 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
`
`
`
`
`
`
`
`
`
`IPR2021-00193 (Patent 10,299,708 B1)
`IPR2021-00195 (Patent 10,376,190 B1)
`IPR2021-00208 (Patent 10,258,266 B1)
`IPR2021-00209 (Patent 10,376,191 B1)
`
`
`In each captioned proceeding, we entered a Decision to Institute the
`requested inter partes review. See, e.g., IPR2021-00195, Paper 7.1 On
`July 2, 2021, Petitioner requested authorization to file a motion to submit
`supplemental information in each proceeding, and we granted authorization
`by email.
`On July 9, 2021, Petitioner filed a Motion to Submit Supplemental
`Information in each proceeding. See, e.g., IPR2021-00195, Paper 10
`(“Mot.”). In IPR2021-00193 and IPR2021-00195, Petitioner moves to
`submit a Declaration of Jacob Munford (“Munford Declaration”),
`a Declaration of Gordon MacPherson: Mendelson-2003 (“MacPherson M-
`2003 Declaration”), and a Declaration of Gordon MacPherson: Mendelson-
`2006 (“MacPherson M-2006 Declaration”) into the record as supplemental
`information, to be entered as Exhibits 1040–1042. See, e.g., id. at 1.
`In IPR2021-00208 and IPR2021-00209, Petitioner moves to submit the
`Munford and MacPherson M-2003 Declarations into the record as
`supplemental information, to be entered as Exhibits 1040–1041. IPR2021-
`00208, 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. 2–3. Petitioner also contends that its
`
`
`1 In this Order, we provide citations to the record of IPR2021-00195, unless
`otherwise indicated. Similar papers appear in the record of each captioned
`proceeding.
`
`2
`
`
`
`IPR2021-00193 (Patent 10,299,708 B1)
`IPR2021-00195 (Patent 10,376,190 B1)
`IPR2021-00208 (Patent 10,258,266 B1)
`IPR2021-00209 (Patent 10,376,191 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
`
`
`
`IPR2021-00193 (Patent 10,299,708 B1)
`IPR2021-00195 (Patent 10,376,190 B1)
`IPR2021-00208 (Patent 10,258,266 B1)
`IPR2021-00209 (Patent 10,376,191 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
`Jarom Kesler
`Stephen Larson
`Jacob Peterson
`KNOBBE, MARTENS, OLSON, & BEAR, LLP
`2JRR@knobbe.com
`2jzk@knobbe.com
`2swl@knobbe.com
`2jup@knobbe.com
`
`
`
`
`
`4
`
`
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