From:
`To:
`Cc:
`Subject:
`Date:
`
`Ted Cannon
`Trials
`IPR50095-0046IP1; AppleIPR127-1
`IPR2022-01299 - proposed procedures if Board authorizes sur-reply declaration
`Sunday, September 17, 2023 10:04:14 PM
`
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`
`Dear Board:
`
`Per the Board’s request during the conference call on September 14, 2023, the parties have
`conferred regarding proposed procedures, scheduling, and page counts or word limits that
`should apply should the Board authorize Masimo to file an expert declaration with its sur-
`reply. The parties have not agreed on a joint proposal, and their separate proposals follow:
`
`Masimo’s position
`
`Masimo proposes the following schedule and word limits:
`
`Date
`10/11/2023
`10/17/2023
`10/23/2023
`10/25/2023
`11/1/2023
`
`Paper/Event
`
`Sur-Reply
`Deposition of expert
`Observations on Cross-examination
`Service of oral hearing demonstratives
`Oral hearing
`
`Word Limit
`6,850 (5,600 + 1,250)
`N/A
`1,250
`N/A
`N/A
`
`The intent of Masimo’s proposal is to provide the parties equal opportunity to address,
`through briefing and expert testimony (in Apple’s Reply and Masimo’s Sur-Reply), the new
`references that Apple included in its Reply. Masimo agrees to make its expert available for
`cross examination and proposes that Apple be allowed to file observations on cross
`examination to highlight portions of the cross-examination testimony. Non-argumentative
`observations are more appropriate than an additional argumentative brief because Apple’s
`Reply already addressed the new references.
`
`Masimo proposes a 1,250-word limit for the observations on cross examination. This limit is
`proportionate to the about 400 words Apple devoted to the new references in its Reply. As a
`counterbalance to the proposed 1,250-word observations, Masimo proposes that it be given
`an additional 1,250 words for its Sur-Reply.
`
`In view of the limited scope of the expert declaration it seeks, Masimo proposes a schedule
`IPR2022-01299
`Ex. 3005
`
`

`

`that would maintain the currently scheduled date for the oral hearing. However, Masimo
`would not oppose extending the proposed dates and rescheduling the oral hearing if the
`Board desires.
`
`Apple’s position
`
`Apple opposes Masimo’s request for a sur-reply declaration for the reasons expressed during
`the conference call on 9/14. To the extent the Board authorizes such a declaration, however,
`Apple respectfully requests that the Board adopt procedures similar to those recently
`authorized in IPR2022-01291 and IPR2022-01465. See IP2022-01291, Paper 43. Specifically,
`Apple would request authorization to cross-examine Masimo’s sur-reply declarant and
`authorization to file the deposition transcript and a Response to Expert Testimony, not to
`exceed 10 pages.
`
`Apple opposes Masimo’s request for an increase in the word limit of the sur-reply. PTAB rules
`provide that replies and sur-replies should be of equal length (5,600 words), regardless of
`whether a declaration accompanies either paper. 37 CFR § 42.24(c). More, additional words
`are unnecessary here and should not be tied to any Response to Expert Testimony or
`Observations, should the Board authorize such a paper. Masimo’s expert would already have
`an opportunity to address the disputed references without word count limitation in the
`declaration. Increasing the word limit in the sur-reply would also allow Masimo to expand its
`arguments on myriad other disputed issues that Apple did not have opportunity to address
`with additional words in its reply.
`
`Should the Board authorize Apple to depose Masimo’s sur-reply declarant and file a Response
`to Expert Testimony, Apple would work with haste to complete these procedures, but should
`still be afforded a reasonable amount of time to do so. Apple respectfully submits the
`deposition should be required to occur no sooner than two weeks after Masimo’s sur-reply,
`Apple should have at least one week from the deposition to prepare and submit the Response
`to Expert Testimony, and the schedule should allow for at least 1-2 weeks from submission of
`the Response to Expert Testimony before the hearing to allow time for hearing preparation,
`demonstrative exchanges, evidentiary briefing, and the like. The schedule is already
`compressed with Masimo’s sur-reply due just three weeks before the hearing, and as such,
`Apple respectfully submits that the hearing should be delayed if a sur-reply declaration and
`additional procedures related to the declaration are authorized.
`
`The hearing in this case is currently scheduled to occur on the same day—November 1st—as
`the hearings in the -1291 and -1465 proceedings. The Board in the -1291 and -1465
`proceedings has requested that the parties schedule a telephone conference in late
`September to discuss “(i) dates when the deposition might take place; (ii) a filing deadline for
`the Response to Expert Testimony; and (iii) whether oral argument in these two cases might
`
`

`

`be delayed by a few weeks to accommodate the deposition date and the filing deadline.”
`Paper 43, p. 5. Should the Board authorize a sur-reply declaration, then given the similar
`issues that would arise in the present proceeding as the -1291 and -1465 proceedings, Apple
`proposes to address these issues for all three proceedings whose hearings are currently
`scheduled for November 1st (i.e., the -1291, -1299, and -1465 proceedings) during the
`teleconference anticipated to be scheduled later this month.
`
`Respectfully,
`
`Ted Cannon
`Counsel for Masimo, with permission of counsel for Apple
`
`Ted M. Cannon
`Partner
`Ted.Cannon@knobbe.com
`949-721-2897 Direct
`Knobbe Martens
`2040 Main St., 14th Fl.
`Irvine, CA 92614
`www.knobbe.com/ted-cannon
`
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