`
`Filed on behalf of:
`Patent Owner Masimo Corporation
`By: Brian C. Claassen (Reg. No. 63,051)
`Carol Pitzel Cruz (Reg. No. 61,224)
`Daniel C. Kiang (Reg. No. 79,631)
`Jeremiah S. Helm, Ph.D. (admitted pro hac vice)
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`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
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
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`v.
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`MASIMO CORPORATION,
`Patent Owner.
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`
`
`Case IPR2022-01291
`U.S. Patent 10,687,745
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`PATENT OWNER REQUEST FOR ORAL ARGUMENT
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`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`Pursuant to 37 C.F.R. § 42.70(a) and the Scheduling Order (Paper 16), Patent
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`Owner Masimo Corporation respectfully requests that the Board hear oral argument
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`in person on the instituted grounds in IPR2022-01291 regarding U.S. Patent No.
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`10,687,745 (“’745 Patent”). The Board has currently scheduled oral argument for
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`November 1, 2023. (Paper 16).
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`The Board has also scheduled oral argument in IPR2022-01465 for November
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`1, 2023. See IPR2022-01465, Paper 16. IPR2022-01465 involves additional claims
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`of the ’745 Patent and substantially the same obviousness grounds. Due to the
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`overlap in issues between the two IPRs, Patent Owner respectfully requests that the
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`oral argument for IPR2022-01291 and IPR2022-01465 be consolidated into one oral
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`argument. Patent Owner requests that the Board allot each party sixty (60) minutes
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`for a consolidated oral argument, or thirty (30) minutes if the arguments are not
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`consolidated.
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`Patent Owner requests (without waiving consideration of any issue not listed
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`below) to address the following issues with respect to IPR2022-01291:
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`The proper construction of the challenged claims;
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` Whether Claims 1 and 9 of the ’745 Patent would have been obvious
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`over Iwamiya and Sarantos;
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` Whether Claims 15, 18, 20, and 27 of the ’745 Patent would have been
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`obvious over Iwamiya, Sarantos, and Venkatraman;
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`-1-
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`IPR2022-01291
`Apple Inc. v. Masimo Corporation
` Whether Claims 1, 9, 15, and 18 would have been obvious over
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`Sarantos and Shie;
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` Whether Claims 15, 18, 20, and 27 would have been obvious over
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`Sarantos, Shie, and Venkatraman;
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` Whether a POSITA would have had a reasonable expectation of success
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`in combining the references asserted in the Petition to obtain the
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`claimed inventions;
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` Whether Petitioner’s Reply improperly raises new arguments and new
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`evidence that exceed the proper scope of reply;
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` Whether Petitioner’s Reply improperly exceeds the word limit for a
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`Reply by incorporating by reference arguments from the supplemental
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`expert declaration (EX1042);
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`Any other issues in papers yet to be filed, such as Motions to Exclude
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`and any Petitioner paper filed after Masimo’s Sur-Reply;
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`Any rebuttal to Petitioner’s presentation on any issue; and
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`Any other issues the Board deems necessary for issuing a final written
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`decision.
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`Patent Owner currently anticipates that four (4) individuals will attend the oral
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`argument on its behalf. Patent Owner requests permission to use audio/visual
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`-2-
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`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`equipment to display demonstrative exhibits, including the projector and screens in
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`the hearing room to project PowerPoint slides or other electronic materials.
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`Respectfully submitted,
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`KNOBBE, MARTENS, OLSON & BEAR, LLP
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`
`
`/Daniel C. Kiang/
`Daniel C. Kiang (Reg. No. 79,631)
`Customer No. 64,735
`
`Attorney for Patent Owner
`Masimo Corporation
`
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`Dated: September 22, 2023
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`-3-
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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 PATENT OWNER REQUEST
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`FOR ORAL ARGUMENT is being served electronically on September 22, 2023,
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`to the e-mail addresses shown below:
`
`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 22, 2023
`
`Nicholas Stephens
`Andrew B. Patrick
`Kim Leung
`Patrick J. Bisenius
`Patrick J. King
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Fax:877-769-7945Email:
`PTABInbound@fr.com
`
`
`
`/Daniel C. Kiang/
`Daniel C. Kiang (Reg. No. 79,631)
`
`Attorney for Patent Owner
`Masimo Corporation
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`
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`-4-
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