Trials@uspto.gov
`571.272.7822
`
`
`
` Paper No. 16
`
` Entered: November 19, 2020
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PERMA PURE L.L.C.,
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner.
`____________
`
`IPR2019-01583
`Patent 9,861,298 B2
`____________
`
`
`Before ERICA A. FRANKLIN, SUSAN L. C. MITCHELL, and
`DAVID COTTA, Administrative Patent Judges.
`
`COTTA, Administrative Patent Judge.
`
`
`
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`
`571.272.7822
`
`
`
` Paper No. 16
`
` Entered: November 19, 2020
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PERMA PURE L.L.C.,
`Petitioner,
`v.
`MASIMO CORPORATION,
`Patent Owner.
`____________
`
`IPR2019-01583
`Patent 9,861,298 B2
`____________
`
`
`Before ERICA A. FRANKLIN, SUSAN L. C. MITCHELL, and
`DAVID COTTA, Administrative Patent Judges.
`
`COTTA, Administrative Patent Judge.
`
`
`
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`
`
`IPR2019-01583
`Patent 9,861,298 B2
`
`
`Pursuant to 37 C.F.R. § 42.70 and the Board’s Scheduling Order
`(Paper 8), Perma Pure L.L.C. (“Petitioner”) and Masimo Corporation
`(“Patent Owner”) have each requested an oral hearing for the above-
`captioned proceeding. Paper 14, 1; Paper 15, 1. Patent Owner requests that
`it be given 30 minutes to present its arguments. Paper 15, 1. Petitioner does
`not specify the amount of time it requests to present its arguments. Paper
`14, 1. The requests for an oral hearing are granted.
`Oral arguments will commence at 10:00 AM Eastern Time on
`December 15, 2020, by video. The Board will provide a court reporter for
`the hearing, and the reporter’s transcript will constitute the official record of
`the hearing. If at any time during the proceeding, you encounter technical or
`other difficulties that fundamentally undermine your ability to adequately
`represent your client, please let the panel know immediately, and
`adjustments will be made.1
`To facilitate planning, each party must contact PTAB Hearings at
`PTABHearings@uspto.gov five business days prior to the oral 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 to be used 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 oral hearing will be
`conducted telephonically.
`If one or both parties would prefer to participate in the oral hearing
`telephonically, they should notify PTAB Hearings at the above email
`
`
`1 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
`
`2
`
`
`
`IPR2019-01583
`Patent 9,861,298 B2
`
`address five business days prior to the hearing to receive dial-in connection
`information.
`Each party will have 30 minutes to present their arguments. Petitioner
`bears the ultimate burden of proof to show that the patent claim is
`unpatentable. Therefore, Petitioner will open the hearing by presenting its
`case regarding the challenged claim. Petitioner may reserve some (but no
`more than half) of its argument time for rebuttal. Patent Owner will then
`respond to Petitioner’s arguments. Patent Owner may reserve time for a
`brief sur-rebuttal. Petitioner may use any time it has reserved for rebuttal to
`respond to Patent Owner’s arguments. Patent Owner may use any time it
`has reserved for sur-rebuttal to respond to Petitioner’s arguments made
`during rebuttal. See Office Consolidated Trial Practice Guide, November
`2019 Edition, 83.2
`The record does not contain information designated as confidential.
`Accordingly, neither party is authorized to disclose confidential information
`during the hearing.
`Demonstrative exhibits used at the oral hearing are aids to oral
`argument and not evidence, and should be clearly marked as such. For
`example, each slide may be marked with the words “DEMONSTRATIVE
`EXHIBIT – NOT EVIDENCE” in the footer. See Office Consolidated Trial
`Practice Guide, November 2019 Edition, 84. Demonstrative exhibits are not
`evidence sufficient to prove underlying facts, but, rather, serve as visual aids
`to facilitate the presentation of argument at an oral hearing. See Duncan v.
`Dep’t of the Air Force, 674 F.3d 1359, 1363 (Fed. Cir. 2012) (discussing the
`nature and proper purpose of demonstrative exhibits). Demonstrative
`
`
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`3
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`IPR2019-01583
`Patent 9,861,298 B2
`
`exhibits cannot be used to advance arguments or introduce evidence not
`previously presented in the record. See Dell Inc. v. Acceleron, LLC, 884
`F.3d 1364, 1369 (Fed. Cir. 2018) (noting that the “Board was obligated to
`dismiss [the petitioner’s] untimely argument . . . raised for the first time
`during oral argument”). Instead, demonstrative exhibits must cite to
`evidence in the record.
`The parties are directed to serve demonstrative exhibits on opposing
`counsel at least five (5) business days before the hearing date. The parties
`shall also provide a courtesy copy of any demonstrative exhibits to the
`Board at least three (3) business days prior to the hearing by emailing them
`to PTABHearings@uspto.gov. The parties shall not file demonstrative
`exhibits in the record of these proceedings.
`The Board expects that the parties will meet and confer in good faith
`to resolve any objections to demonstrative exhibits, but if such objections
`cannot be resolved, the parties may file any objections to demonstrative
`exhibits with the Board at least three (3) business days before the hearing.
`Any objection to demonstrative exhibits that is not timely presented will be
`considered waived. The objections should identify with particularity which
`demonstratives are subject to objection and include a short (one sentence or
`less) statement of the reason for each objection. No argument or further
`explanation is permitted. The Board will consider the objections and
`schedule a conference call if deemed necessary. Otherwise, the Board will
`reserve ruling on the objections until the oral argument. The parties are
`directed to St. Jude Medical, Cardiology Division, Inc. v. The Board of
`Regents of the University of Michigan, IPR2013-00041 (PTAB January 27,
`
`4
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`
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`IPR2019-01583
`Patent 9,861,298 B2
`
`2014) (Paper 65), for guidance regarding the appropriate content of
`demonstrative exhibits.
` The Board generally expects lead counsel for each party to be present
`by video at the oral hearing. Any counsel of record may present the party’s
`argument as long as that counsel is present by video.
`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 oral 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 not less than five (5) days before the
`hearing.
`Please unmute yourself only when speaking. The panel will have
`access to all papers filed with the Board, including demonstratives. During
`the oral hearing, the parties are advised to identify clearly and specifically
`each demonstrative referenced (e.g., by slide or screen number) to ensure the
`clarity and accuracy of the court reporter’s transcript. In addition, the parties
`are advised to identify themselves each time they speak. Furthermore, the
`remote nature of the oral hearing may also result in an audio lag, and so the
`parties are advised to observe a pause prior to speaking, so as to avoid
`speaking over others.
`Members of the public may request to listen in on this oral 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
`
`5
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`
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`IPR2019-01583
`Patent 9,861,298 B2
`
`Board by contacting PTABHearings@uspto.gov at least five business days
`prior to the oral hearing date.
`
`It is
`ORDERED that oral argument will commence at 10:00 AM Eastern
`Time on December 15, 2020.
`
`
`6
`
`
`
`IPR2019-01583
`Patent 9,861,298 B2
`
`
`PETITIONER:
`Jeffrey Kaplan
`jkaplan@kbsolaw.com
`
`Wayne Breyer
`wbreyer@kbsiplaw.com
`
`
`PATENT OWNER:
`Joseph Jennings
`2jfj@knobbe.com
`
`Irfan Lateef
`2ial@knobbe.com
`
`Jarom Kesler
`2jzk@knobbe.com
`
`Agnes Juang
`2axj@knobbe.com
`
`
`7
`
`
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