`Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 50
`Date: September 28, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`____________
`
`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)1
`
`____________
`
`
`
`Before JOSIAH C. COCKS, GEORGE R. HOSKINS, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`HOSKINS, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings and Trial Hearing
`37 C.F.R. §§ 42.5 & 42.70
`
`
`
`
`1 This order is being filed in each proceeding listed in the caption, due to the
`common issues addressed. The parties are not authorized to use a combined
`caption in these proceedings.
`
`
`
`
`
`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
`
`
`On September 27, 2023, the Board held a telephone conference with
`counsel for both parties. Patent Owner’s counsel had arranged for a court
`reporter to transcribe the phone call. Accordingly, we instructed Patent
`Owner to file the resulting transcript as an Exhibit in each proceeding. That
`transcript, once filed, will constitute the official record of the telephone
`conference.
`This Order: (1) memorializes the result of the telephone conference as
`to the briefs and exhibits to be filed in these two cases, and related deadlines;
`and (2) sets forth various procedures for preparing for and conducting a
`combined oral argument in these two cases.
`
`(1) BRIEFING AND CASE SCHEDULE AMENDMENTS
`We granted Petitioner leave to file a Corrected Petition in
`IPR2022-01291, pursuant to Petitioner’s prior email request
`(IPR2022-01291, Ex. 3003).
`Patent Owner indicated the Board’s default 5,600 word count
`limitation on patent owner sur-replies (see 37 C.F.R. § 42.24(c)(4)) will
`suffice in this case, so Patent Owner does not seek an increase in that
`limitation. Petitioner similarly indicated the 10 page limitation imposed by
`our previous Order (Paper 43) on the Response to Expert Testimony will
`likely be sufficient, but reserved the right to seek an increase after Petitioner
`has had a chance to review the Patent Owner Sur-reply once it is filed.
`Further, per the parties’ joint proposal, the case schedule for these two
`cases is amended as set forth in the following table. The identified “DUE
`DATES” are explained more fully in Paper 16.
`
`2
`
`
`
`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
`
`
`Item
`DUE DATE 3
`-- Patent Owner Sur-reply
`-- Decl. of Dr. James Duckworth
`Deposition of Dr. Duckworth
`by Petitioner
`Response to Expert Testimony
`by Petitioner
`DUE DATE 5
`-- Motion(s) to Exclude
`DUE DATE 6
`-- Opp. to Motion(s) to Exclude
`DUE DATE 7
`-- Reply re Motion(s) to Exclude
`Parties Exchange Demon. Exs.
`for Hearing
`Parties File Demon. Exs.
`for Hearing
`DUE DATE 8
`-- Oral Argument
`
`Current Date New Date
`Mon. Oct. 2 Mon. Oct. 2
`
`n/a
`
`n/a
`
`Wed. Oct. 18
`
`Fri. Oct. 27
`
`Fri. Oct. 13 Mon. Oct. 30
`
`Fri. Oct. 20 Mon. Nov. 6
`
`Fri. Oct. 27 Mon. Nov. 13
`
`n/a
`
`n/a
`
`Mon. Nov. 13
`
`Wed. Nov. 15
`
`Wed. Nov. 1
`
`Fri. Nov. 17
`
`(2) ORAL ARGUMENT
`
`Time and Format
`A.
`Oral arguments will commence in these two proceedings, in a
`consolidated fashion as requested by both parties, beginning at 1:00 PM
`EASTERN TIME on November 17, 2023. Petitioner requested that the
`3
`
`
`
`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
`
`hearing be conducted virtually by videoconference (see IPR2022-01291,
`Paper 46, 1), whereas Patent Owner requested that the hearing be conducted
`in person (see IPR2022-01291, Paper 47, 1). Upon consideration, the Board
`will hold the hearing by videoconference. The Board will provide a court
`reporter for the hearing, and the reporter’s transcript will constitute the
`official record of the hearing.
`Petitioner requested that each party be given 75 minutes of argument
`time. See IPR2022-01291, Paper 46, 1. Patent Owner requested that each
`party be given 60 minutes of argument time. See IPR2022-01291, Paper 47,
`1. Upon consideration of these requests, and the issues presented in these
`proceedings, we grant each party 75 minutes of argument time to address
`the two proceedings together. As the party with the burden of proof and
`persuasion, Petitioner will proceed first to present its case with regard to the
`challenged claims and grounds set forth in the Petition. Patent Owner then
`may present its own case, and respond to Petitioner’s argument. Petitioner
`and Patent Owner may reserve some, but no more than half, of the allotted
`time for rebuttal and sur-rebuttal, respectively. The parties are reminded that
`arguments made during rebuttal and sur-rebuttal periods must be responsive
`to arguments the opposing party made in its immediately preceding
`presentation. The parties are also reminded that during the hearing, the
`parties “may only present arguments relied upon in the papers previously
`submitted.” PTAB Consolidated Trial Practice Guide (Nov. 2019)
`(“CTPG”) 86.2
`During the September 27 telephone conference, Petitioner indicated
`the parties may desire to discuss confidential information which we have
`
`
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`4
`
`
`
`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
`
`placed under seal, during the oral argument. Accordingly, the hearing will
`proceed in two phases. In a first phase that will be open to the public, each
`party will present its argument as to publicly available information, in the
`back-and-forth manner described in the previous paragraph of this Order. In
`a second phase that will be closed to any person not qualified to receive
`sealed information pursuant to the Board’s Protective Order (see
`IPR2022-01291, Paper 24, Ex. 1035), in the same manner. The public
`line(s) will be terminated prior to the beginning of the second phase, to
`preserve confidentiality. Accordingly, at the beginning of the hearing, we
`will ask counsel for each party whether they wish to reserve some of their
`argument time for the second session. Any such reservation may be
`modified, either up or down, as the hearing progresses.
`The parties may request a pre-hearing conference in advance of the
`hearing. See CTPG 82. “The purpose of the pre-hearing conference is to
`afford the parties the opportunity to preview (but not argue) the issues to be
`discussed at the hearing, and to seek the Board’s guidance as to particular
`issues that the panel would like addressed by the parties.” Id. If either party
`desires a pre-hearing conference, the parties should jointly contact the Board
`at Trials@uspto.gov at least seven (7) business days before the hearing date
`to request a conference call for that purpose.
`
`B. Demonstrative Exhibit(s)
`Each party shall serve on the other party any demonstrative exhibit(s)
`it intends to use during the hearing on or before November 13, 2023. See
`37 C.F.R. § 42.70(b). Each party shall file any demonstrative exhibits it
`intends to use during the hearing as an exhibit on or before November 15,
`2023.
`
`5
`
`
`
`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
`
`
`Demonstrative exhibits used at the oral hearing are aids to oral
`argument and are not evidence. Accordingly, demonstrative exhibits shall
`be clearly marked with the words “DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE” in the footer. Demonstrative 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) (holding that the Board is obligated under its own regulations to
`dismiss untimely argument “raised for the first time during oral argument”).
`“[N]o new evidence may be presented at the oral argument.” CTPG 86; see
`also St. Jude Med., Cardiology Div., Inc. v. The Bd. of Regents of the Univ.
`of Mich., IPR2013-00041, Paper 65, 2–3 (PTAB Jan. 27, 2014) (explaining
`that “new” evidence includes evidence already of record but not previously
`discussed in any paper of record).
`Furthermore, because of the strict prohibition against the presentation
`of new evidence or arguments at a hearing, it is strongly recommended that
`each demonstrative include a citation to a paper in the record, which allows
`the Board to easily ascertain whether a given demonstrative contains “new”
`argument or evidence or, instead, contains only that which is developed in
`the existing record.
`Due to the nature of the Board’s consideration of demonstratives and
`the opportunity afforded for the parties to reach an agreement without
`involving the Board, the Board does not anticipate that objections to
`demonstratives are likely to be sustained. Nevertheless, to the extent that a
`party objects to the propriety of any demonstrative, the parties shall meet
`and confer in good faith to resolve any objections to demonstratives prior to
`filing the objections with the Board. If such objections cannot be resolved,
`the parties may file any objections to demonstratives with the Board no later
`6
`
`
`
`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
`
`than the time of the hearing. The objections shall identify with particularity
`which portions of the demonstratives are subject to objection (and should
`include a copy of the objected-to portions) and include a one sentence
`statement of the reason for each objection. No argument or further
`explanation is permitted. The Board will consider any objections, and may
`reserve ruling on the objections.3 Any objection to demonstratives that is
`not timely presented will be considered waived.
`Finally, the parties are reminded that each presenter should identify
`clearly and specifically each paper (e.g., by slide or screen number for a
`demonstrative) referenced during the hearing to ensure the clarity and
`accuracy of the court reporter’s transcript and for the benefit of all
`participants appearing electronically.
`
`Presenting Counsel
`C.
`The Board generally expects lead counsel for each party to be present
`at the hearing via video. See CTPG 11. Any counsel of record may present
`the party’s argument as long as that counsel is present by video.
`
`Video Hearing Details
`D.
`To facilitate planning, each party must contact the Board at
`PTABHearings@uspto.gov at least five business days prior to the 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 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
`
`
`3 If time permits, the Board may schedule a conference call with the parties
`to discuss any filed objections.
`
`7
`
`
`
`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
`
`provided with dial-in connection information, and the hearing will be
`conducted telephonically.
`If one or both parties would prefer to participate in the hearing
`telephonically, they must contact the Board at PTABHearings@uspto.gov at
`least five business days prior to the hearing date to receive dial-in
`connection information.
`Counsel should unmute only when speaking. The panel will have
`access to all papers filed with the Board, including demonstratives. During
`the hearing, the parties are reminded to identify clearly and specifically each
`paper referenced (e.g., by slide or screen number for a demonstrative) to
`ensure the clarity and accuracy of the court reporter’s transcript and for the
`benefit of all participants appearing electronically. In addition, the parties
`are advised to identify themselves each time they speak. Furthermore, the
`remote nature of the hearing may also result in an audio lag, and thus the
`parties are advised to observe a pause prior to speaking, so as to avoid
`speaking over others.
`If at any time during the hearing, counsel encounters technical or
`other difficulties that fundamentally undermine counsel’s ability to
`adequately represent its client, please let the panel know immediately, and
`adjustments will be made.4
`
`Remote Attendance Requests
`E.
`Members of the public may request to listen to and/or view this
`hearing. If resources are available, the Board generally expects to grant such
`requests, subject to the limitations discussed above regarding confidential
`
`
`4 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
`8
`
`
`
`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
`
`information. If either party objects to the Board granting such requests, the
`party must notify the Board at PTABHearings@uspto.gov at least ten
`business days prior to the hearing date.
`
`Audio/Visual Equipment Requests
`F.
`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 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 at least five business days before the hearing date.
`
`Legal Experience and Advancement Program
`G.
`The Board has established the “Legal Experience and Advancement
`Program,” or “LEAP,” to encourage advocates with less legal experience to
`argue before the Board to develop their skills. The Board defines a LEAP
`practitioner as a patent agent or attorney having three or fewer substantive
`oral arguments in any federal tribunal, including PTAB.5
`The parties are encouraged to participate in the Board’s LEAP
`program. Either party may request that a qualifying LEAP practitioner
`participate in the program and conduct at least a portion of the party’s oral
`argument. The Board will grant up to fifteen minutes of additional argument
`time to that party, depending on the length of the proceeding and the Board’s
`
`5 Whether an argument is “substantive” for purposes of determining whether
`an advocate qualifies as a LEAP practitioner will be made on a case-by-case
`basis with considerations to include, for example, the amount of time that
`the practitioner argued, the circumstances of the argument, and whether the
`argument concerned the merits or ancillary issues.
`9
`
`
`
`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
`
`hearing schedule. A party should submit a request, no later than at least five
`business days before the oral hearing, by email to the Board at
`PTABHearings@uspto.gov.6
`The LEAP practitioner may conduct the entire oral argument or may
`share time with other counsel, provided that the LEAP practitioner is offered
`a meaningful and substantive opportunity to argue before the Board. The
`party has the discretion as to the type and quantity of oral argument that will
`be conducted by the LEAP practitioner.7 Moreover, whether the LEAP
`practitioner conducts the argument in whole or in part, the Board will permit
`more experienced counsel to provide some assistance to the LEAP
`practitioner, if necessary, during oral argument, and to clarify any statements
`on the record before the conclusion of the oral argument. Importantly, the
`Board does not draw any inference about the importance of a particular issue
`or issues, or the merits of the party’s arguments regarding that issue, from
`the party’s decision to have (or not to have) a LEAP practitioner argue.
`In instances where an advocate does not meet the LEAP eligibility
`requirements due to the number of “substantive” oral hearing arguments, but
`nonetheless has a basis for considering themselves to be in the category of
`advocates that this program is intended to assist, the Board encourages
`argument by such advocates during oral hearings. Even though additional
`
`
`6 Additionally, a LEAP Verification Form shall be submitted by the LEAP
`practitioner, confirming eligibility for the program. A combined LEAP
`Practitioner Request for Oral Hearing Participation and Verification Form is
`available on the LEAP website, www.uspto.gov/leap.
`7 Examples of the issues that a LEAP practitioner may argue include claim
`construction argument(s), motion(s) to exclude evidence, or patentability
`argument(s) including, e.g., analyses of prior art or objective indicia of
`non-obviousness.
`
`10
`
`
`
`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
`
`argument time will not be provided when the advocate does not qualify for
`LEAP, a party may share argument time among counsel and the Board will
`permit the more experienced counsel to provide some assistance, if
`necessary, during oral argument, and to clarify any statements on the record
`before the conclusion of the oral argument.
`All practitioners appearing before the Board shall demonstrate the
`highest professional standards. All practitioners are expected to have a
`command of the factual record, the applicable law, and Board procedures, as
`well as the authority to commit the party they represent.
`
`(3) ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the briefing schedule for these two proceedings is
`amended as set forth above in Section (2); and
`FURTHER ORDERED that oral argument for these two proceedings
`shall commence at 1:00 PM EASTERN TIME on November 17, 2023,
`and proceed in the manner set forth in Section (3) above.
`
`11
`
`
`
`IPR2022-01291 (Patent 10,687,745 B1)
`IPR2022-01465 (Patent 10,687,745 B1)
`
`FOR PETITIONER:
`
`W. Karl Renner
`Nicholas Stephens
`Andrew B. Patrick
`Kim Leung
`Patrick J. Bisenius
`Patrick J. King
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`nstephens@fr.com
`patrick@fr.com
`leung@fr.com
`bisenius@fr.com
`pking@fr.com
`IPR50095-0045IP1@fr.com
`PTABInbound@fr.com
`
`FOR PATENT OWNER:
`
`Brian C. Claassen
`Carol Pitzel Cruz
`Daniel C. Kiang
`Jeremiah S. Helm
`KNOBBE, MARTENS, OLSON, & BEAR, LLP
`2bcc@knobbe.com
`2cmp@knobbe.com
`2dck@knobbe.com
`2jgh@knobbe.com
`AppleIPR745-1@knobbe.com
`
`12
`
`
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