`
`Filed on behalf of:
`Patent Owner Masimo Corporation
`By: Brian C. Claassen (Reg. No. 63,051)
`Carol Pitzel Cruz (Reg. No. 61,224)
`Jarom D. Kesler (Reg. No. 57,046)
`Jacob L. Peterson (Reg. No. 65,096)
`Daniel Kiang (Reg. No. 79,631)
`
`
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`E-mail:
`AppleIPR745-1@knobbe.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2022-01291
`U.S. Patent 10,687,745
`
`
`
`
`
`
`UNOPPOSED MOTION FOR JEREMIAH S. HELM TO APPEAR PRO
`HAC VICE ON BEHALF OF PATENT OWNER MASIMO CORPORATION
`
`
`
`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`I.
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`Pursuant to the Board’s August 4, 2022, Notice of Filing Date Accorded
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`(Paper 4) and 37 C.F.R. §§ 42.10(c) and 42.22, Patent Owner Masimo Corporation
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`(“Masimo”) hereby moves for an Order allowing Jeremiah S. Helm of Knobbe,
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`Martens, Olson & Bear, LLP to appear pro hac vice on behalf of Masimo in the
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`above-captioned case. Masimo has conferred with counsel for Petitioner Apple
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`Inc. (“Apple”), and Apple’s counsel indicated that Apple does not intend to oppose
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`Masimo’s motion to allow Mr. Helm to appear pro hac vice in this matter.
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`II. LIST OF EXHIBITS RELIED UPON FOR THIS MOTION
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`Masimo Exhibit 2001 - Declaration of Jeremiah S. Helm in Support of
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`Motion to Appear Pro Hac Vice on Behalf of Patent Owner Masimo Corporation.
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`III. REASONS THE REQUESTED RELIEF SHOULD BE GRANTED
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`As set forth below in the Statement of Material Facts, Masimo has made all
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`of the showings required under 37 C.F.R. § 42.10(c) for recognizing Mr. Helm pro
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`hac vice. In particular, Mr. Helm is an experienced litigation attorney who has
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`represented clients in numerous patent litigation cases in various United States
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`District Courts and the Court of Appeals for the Federal Circuit, including
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`technically and legally complex matters such as will be present in this proceeding.
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`Accordingly, allowing Mr. Helm to appear pro hac vice on behalf of Masimo is
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`appropriate in this proceeding.
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`-1-
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`
`
`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`IV. STATEMENT OF MATERIAL FACTS
`
`1.
`
`37 C.F.R. § 42.10(c) provides that “[t]he Board may recognize
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`counsel pro hac vice during a proceeding upon a showing of good cause, subject
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`to the condition that lead counsel be a registered practitioner and to any other
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`conditions as the Board may impose. For example, where the lead counsel is a
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`registered practitioner, a motion to appear pro hac vice by counsel who is not a
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`registered practitioner may be granted upon showing that counsel is an
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`experienced litigating attorney and has an established familiarity with the subject
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`matter at issue in the proceeding.”
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`2.
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`Lead counsel for Masimo in this inter partes review proceeding is
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`Brian C. Claassen. Mr. Claassen is registered to practice before the United States
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`Patent and Trademark Office and holds Registration No. 63,051.
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`3.
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`As set forth in Masimo Exhibit 2001 (the “Helm Declaration”), Mr.
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`Helm is an experienced litigation attorney and has an established familiarity with
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`the subject matter at issue in this proceeding. Helm Decl. ¶¶ 2-4. In particular,
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`Mr. Helm has over 12 years of experience as a patent litigator and has represented
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`clients in numerous patent litigation cases in various proceedings in United States
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`District Courts and the Court of Appeals for the Federal Circuit. Id. ¶ 2.
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`4.
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`Further, Mr. Helm holds a Ph.D. degree in Chemistry from Princeton
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`University and served as a law clerk to the Honorable Kimberly A. Moore, Chief
`
`-2-
`
`
`
`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`Judge of the United States Court of Appeals for the Federal Circuit. Id. ¶ 3.
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`Moreover, Mr. Helm is experienced with technically and legally complex matters
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`in the field of chemistry and biotechnology. Id.
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`5. With regard to U.S. Patent 10,945,648 (“the ’648 patent”), the patent
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`at issue in this proceeding, Mr. Helm is familiar with the ’648 patent, and with the
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`legal subject matter, technical subject matter, and cited art discussed in the petition
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`for inter partes review of the ’648 patent and Apple’s petition for inter partes
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`review. Id. ¶ 4. In view of his legal experience, technical background, and
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`familiarity with the issues in the present matter, Patent Owner Masimo has
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`requested his services in the present matter. Denial of his appearance in this case
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`would create an undue burden on Patent Owner. Id.
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`6. Mr. Helm has read and will comply with the Office Patent Trial
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`Practice Guide and the Board’s Rules of Practice for Trials set forth in Part 42 of
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`Title 37 of the Code of Federal Regulations. Id. ¶ 9. Mr. Helm also agrees to be
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`subject to the United States Patent and Trademark Office Rules of Professional
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`Conduct set forth in 37 C.F.R. §§ 11.101 et seq., and disciplinary jurisdiction under
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`37 C.F.R. § 11.19(a). Id. ¶ 10.
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`7.
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`Finally, Mr. Helm has attested to the remaining elements of Paragraph
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`2(b) of the representative “Order – Authorizing Motion for Pro Hac Vice
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`Admission” in Case IPR2013-00639, Paper 7. Id. ¶¶ 2-11; see Notice of Filing
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`-3-
`
`
`
`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`Date Accorded to Petition and Time for Filing Patent Owner Preliminary Response
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`(Paper 3) at 2.
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`V. CONCLUSION
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`In view of the foregoing and having satisfied the requirements of 37 C.F.R.
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`§ 42.10(c), Masimo hereby moves for an Order allowing Jeremiah S. Helm of
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`Knobbe, Martens, Olson & Bear, LLP, to appear pro hac vice on behalf of Masimo
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`in the above-captioned case.
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`
`
`Dated: September 13, 2022
`
`
`
`
`
`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`
`
`/Brian C. Claassen/
`Brian C. Claassen (Reg. No. 63,051)
`Customer No. 64,735
`
`Attorney for Patent Owner
`Masimo Corporation
`
`
`-4-
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`
`
`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`CERTIFICATE OF SERVICE
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`
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`I hereby certify that, pursuant to 37 C.F.R. § 42.6(e) and with the agreement
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`of counsel for Petitioner, a true and correct copy of UNOPPOSED MOTION
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`FOR JEREMIAH S. HELM TO APPEAR PRO HAC VICE ON BEHALF OF
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`PATENT OWNER MASIMO CORPORATION is being served electronically
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`on September 13, 2022, to the e-mail addresses shown below:
`
`Daniel D. Smith
`Andrew B. Patrick
`Nicholas Stephens
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Fax:877-769-7945Email:
`PTABInbound@fr.com
`
`
`
`/Brian C. Claassen/
`Brian C. Claassen (Reg. No. 63,051)
`
`Attorney for Patent Owner
`Masimo Corporation
`
`
`
`W. Karl Renner
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 612-335-5070
`Fax: 612-288-9696
`Email: IPR50095-0045IP1@fr.com
`
`Dated: September 13, 2022
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`
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`56281737
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`-5-
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`