IPR2022-01291
`Apple Inc. v. Masimo Corporation
`
`
`Filed: November 4, 2022
`
`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
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2022-01291
`U.S. Patent 10,687,745
`
`
`
`
`
`
`PATENT OWNER’S RESPONSE TO PETITIONER’S NOTICES
`RANKING PETITIONS
`
`
`
`
`Apple Inc. v. Masimo Corporation
`
`
`Filed: November 4, 2022
`
`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
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MASIMO CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2022-01291
`U.S. Patent 10,687,745
`
`
`
`
`
`
`PATENT OWNER’S RESPONSE TO PETITIONER’S NOTICES
`RANKING PETITIONS
`
`
`
`
`
`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`
`
`Patent Owner (“Masimo”) and Petitioner (“Apple”) already litigated the
`
`validity of U.S. Patent No. 10,687,745 (the “’745 Patent”) through an evidentiary
`
`hearing in ITC Investigation No. 337-TA-1276 (the “Investigation”). After that
`
`hearing concluded, and after Apple represented to the ITC that it was presenting its
`
`best evidence, Apple filed four petitions challenging the ’745 Patent: IPR2022-
`
`01291, 1292, 1465, and 1466. Apple staggered the petitions, filing the 1291 and
`
`1292 Petitions on July 22, 2022, and then filing the 1465 and 1466 Petitions on
`
`August 26, 2022.
`
`A. Apple Failed to Properly Rank Its Petitions
`
`Apple filed four petitions against the ’745 Patent, separating its arguments
`
`across them. Where “a petitioner files two or more petitions challenging the same
`
`patent, then the petitioner should … identify … a ranking of the petitions in the
`
`order in which it wishes the Board to consider the merits.” Consolidated Trial
`
`Practice Guide (Nov. 2019) (“TPG”), 59-60. But Apple did not rank all four
`
`petitions. Instead, Apple ranks the petitions in two groups of two:
`
`See 1291 Notice; 1465 Notice. Confusingly, Apple’s listing of primary references
`
`for the 1291 Petition actually lists the primary references for the 1292 Petition, and
`
`
`
`-1-
`
`
`
`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`vice versa. So, it is unclear which petition Apple meant to rank first between those
`
`two.
`
`Apple attempts to excuse its failure to rank all four petitions by stating that
`
`they challenge “a different subset of claims.” 1465 Notice, 2 n.1. The Board has
`
`denied institution based on similar arguments. See Fantasia Trading LLC v.
`
`CogniPower, LLC, IPR2021-00068, Paper 22 at 6-13 (PTAB May 12, 2021).
`
`In the later filed petitions, Apple explains it “strongly desires substantive
`
`review of the first-ranked IPR2022-01465 petition.” 1465 Notice, 4. That notice
`
`also describes the interrelationship between all four petitions. Id. 2 n.1. Thus,
`
`from that notice, Apple appears to rank the 1465 Petition above all the others.
`
`B. Apple Fails to Establish the Necessity for Four Petitions
`
`Notably, Apple could have asserted at least one ground against each
`
`challenged claim in a single petition. Apple provides no excuse for needlessly
`
`multiplying the burden on the Board and Masimo by filing four petitions.
`
`Apple segregated its petitions both by claim and references. Its first two
`
`petitions, 1291 and 1292, challenged the three claims asserted in the Investigation
`
`(9, 18, and 27) and their corresponding independent claims (1, 15, and 20). In the
`
`1465 and 1466 Petitions, Apple challenges only dependent claims not asserted in
`
`the Investigation. Apple also used the same references across these petitions—the
`
`-2-
`
`
`
`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`1291 and the 1465 Petitions present substantially identical arguments based on the
`
`same combinations of art. The same is also true of the 1292 and 1466 Petitions.
`
`Apple ignores the Board’s guidance that it is “unlikely that circumstances
`
`will arise where three or more petitions by a petitioner with respect to a particular
`
`patent will be appropriate.” TPG, 59. Multiple petitions may be appropriate:
`
`“when the patent owner has asserted a large number of claims in litigation or when
`
`there is a dispute about priority date requiring arguments under multiple prior art
`
`references.” Id. Neither situation is present here.
`
`First, in the Investigation, Masimo asserted only three claims of the ’745
`
`Patent: Claims 9, 18, and 27. EX2011, 185. Moreover, the evidentiary hearing
`
`finished before Apple filed these Petitions. Masimo has not asserted the ’745
`
`Patent in any other litigation. Second, Apple also does not identify any dispute
`
`about the ’745 Patent priority date necessitating an additional petition.
`
`The TPG also directs petitioners to explain “the differences between the
`
`petitions” and why those differences are material. TPG, 60. Apple failed to
`
`identify, much less explain, any material differences amongst all four petitions.
`
`Instead, Apple described the primary references (Iwamiya, Sarantos, Ackermans,
`
`and Mendelson-799) at a high level without identifying any material differences
`
`between them. See Paper 3, 2-3. Thus, Apple failed to establish any need for four
`
`petitions.
`
`-3-
`
`
`
`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`C. The Petitions Are Needlessly Duplicative
`
`Apple fails to show that “it was necessary to distribute its challenges across
`
`four petitions in order to present one ground of unpatentability for each challenged
`
`claim.” Fantasia Trading, IPR2021-00068, Paper 22 at 6-13. The 1465 and 1466
`
`Petitions regurgitate the same invalidity arguments that Apple presented in the
`
`1291 and 1292 Petitions for independent Claims 1, 15, and 20. Compare 1465
`
`Petition at 7-18, 25-32, 39-44, 53-55, 59-62 with 1291 Petition at 8-19, 21-28, 30-
`
`43; compare 1466 Petition at 12-23, 30-38, 45-47 with 1292 Petition at 12-31, 35-
`
`37.
`
`Apple’s duplication reveals that Apple could have addressed every
`
`challenged claim in a single petition. Apple filed the 1291 and 1465 Petitions
`
`based on substantially the same art. The only claims not addressed in the 1465
`
`Petition are Claims 9, 18, and 27. Apple addressed Claim 9 in the 1291 Petition in
`
`roughly one page (at 19-20), Claim 18 in a one-line cross-reference to Claim 9 (at
`
`27), and Claim 27 with the same argument Apple presented in the 1465 Petition for
`
`Claim 2 (compare 1291 Pet. at 29 with 1465 Pet. at 18). Thus, Apple could have
`
`addressed all challenged claims in a single petition with little effort, which would
`
`have resulted in a substantially simplified proceeding.. Similar reasoning applies
`
`to the other segregated grounds and petitions.
`
`-4-
`
`
`
`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`Moreover, Apple alleges that the 1465 and 1466 Petitions address only
`
`dependent claims 2-6, 8, 10-14, 17, 19, and 21-26. 1465 Petition, 75
`
`(characterizing the earlier and later petitions as containing “mutually exclusive sets
`
`of claim challenges”); 1466 Petition, 66 (same). Yet, Apple duplicated the entirety
`
`of the arguments regarding the allegedly unchallenged independent claims.
`
`Apple’s argument is unpersuasive. The Board will have to address the merits of
`
`the independent claims to address the dependent claims because the dependent
`
`claims include all the limitations of the claims from which they depend.
`
`D.
`
`Four Petitions on the ’745 Patent Are Unnecessary
`
`As an excuse for filing additional petitions, Apple speculates that Masimo
`
`could assert “the additional claims challenged in the present petitions (which are
`
`not presently asserted at the ITC) in a future district court action.” IPR2022-
`
`01465, Paper 2, 4. But that excuse does not address any material difference
`
`between the petitions. Apple fails to explain why it did not challenge the
`
`additional claims in its first petition along with the claims asserted in the ITC.
`
`Apple has provided no reason for the Board to “exercise its discretion to institute
`
`additional petitions.” TPG, 60.
`
`All four petitions lack merit and Masimo respectfully requests that the Board
`
`deny institution. However, if the Board decides to institute on one, Apple has
`
`asserted a strong desire that it be IPR2022-01465.
`
`-5-
`
`
`
`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`Respectfully submitted,
`
`Dated: November 4, 2022
`
`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
`
`
`
`
`
`
`
`
`
`
`
`-6-
`
`
`
`IPR2022-01291
`Apple Inc. v. Masimo Corporation
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that, pursuant to 37 C.F.R. § 42.6(e) and with the agreement
`
`of counsel for Petitioner, a true and correct copy of PATENT OWNER’S
`
`RESPONSE TO PETITIONER’S NOTICES RANKING PETITIONS is being
`
`served electronically on November 4, 2022, to the e-mail addresses shown below:
`
`W. Karl Renner, Reg. No. 41,265
`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: November 4, 2022
`
`56186353
`
`Andrew Patrick, Reg. No. 63,471
`Daniel D. Smith, Reg. No. 71,278
`Hyun Jin In, Reg. No. 70,014
`Grace Kim, Reg. No. 71,977
`Gretchen DeVries, Reg. No. 72,505
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 612-335-5070
`Fax: 612-288-9696
`Email: PTABInbound@fr.com
`
`
`
`/ Brian C. Claassen /
`Brian C. Claassen (Reg. No. 63,051)
`
`Attorney for Patent Owner
`Masimo Corporation
`
`
`
`
`-7-
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
